The Toro Company v. Dick Egy
Claim Number: FA1404001553926
Complainant is The Toro Company (“Complainant”), represented by Linda M. Byrne of Crawford Maunu PLLC, Minnesota, USA. Respondent is Dick Egy (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <torolawnmowerpartsonline.com>, registered with FastDomain Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on April 14, 2014; the National Arbitration Forum received payment on April 14, 2014.
On April 17, 2014, FastDomain Inc. confirmed by e-mail message addressed to the National Arbitration Forum that the <torolawnmowerpartsonline.com> domain name is registered with FastDomain Inc. and that Respondent is the current reg-istrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 April 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2014 by which Re-spondent 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@torolawnmowerpartsonline.com. Also on April 17, 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 May 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
Complainant is a leading manufacturer of lawn mowers, turf care equipment, lawn tractors, utility vehicles, snow throwers and other outdoor power equipment.
Complainant holds registrations, which are on file with the United States Patent and Trade-mark Office (“USPTO”), for the TORO trademark (including Registry No. 961,987, registered June 26, 1973).
Respondent registered the <torolawnmowerpartsonline.com> domain name on February 11, 2013.
That domain name is confusingly similar to Complainant’s TORO mark.
Respondent has not been commonly known by that domain name.
Respondent is not an authorized dealer in Complainant’s products, nor is Respondent affiliated with complainant in any way.
Respondent uses the domain name, for commercial gain, to attract Internet users to its resolving website.
The content of that website allows computer users to follow links to other web-sites, most of which are unrelated to Complainant’s products and services, and some of which are Complainant’s commercial competitors.
Respondent does not have any rights to or legitimate interests in the disputed domain name.
Respondent’s employment of the domain name disrupts Complainant’s business.
Respondent knew of Complainant and its rights in the TORO mark at the time the disputed domain name was registered.
The disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the TORO trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where a UDRP complainant submitted evidence of its registration of mark with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that Respondent’s <torolawnmowerpartsonline.com> domain name is confusingly similar to Complainant’s TORO mark. The domain name contains the entire mark, with the addition of the generic terms “lawn,” “mower,” “parts,” and “online,” which describe an aspect of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding, under Policy ¶ 4(a)(i), the domain name <bodyshopdigital.com> to be confusingly similar to a UDRP com-plainant’s THE BODY SHOP trademark).
See also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (finding that the addition to the mark of another of the gen-eric top-level domain (“gTLD”) “.com” was irrelevant to a Policy ¶ 4(a)(i) analysis).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name <torolawnmowerpartsonline.com>, that Respondent is not an authorized dealer in Complainant’s products, and that Respondent is not affiliated with Complainant in any way. Moreover, the WHOIS information for the domain name identifies the registrant only as “Dick Egy,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the domain name so as to have rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), the panel there finding that a respondent was not commonly known by disputed domain names, and so failed to show that it had rights to or legitimate interests in them within the meaning of Policy ¶ 4(c)(ii), where the WHOIS inform-ation for the domains identified the registrant by a name other than any of those domains, and where there was no other evidence in the record to suggest that that respondent was commonly known by the domains there in dispute.
We next observe that Complainant asserts, without objection from Respondent, that the disputed domain name diverts Internet users looking for Complainant’s official website to a website that promotes the websites of businesses unrelated to Complainant, some of whom are Complainant’s commercial competitors, and that Respondent’s employment of the domain name in this manner is done for Respondent’s profit. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See, for example, Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the con-tested <torolawnmowerpartsonline.com> domain name as alleged in the Com-plaint disrupts Complainant’s business. This stands as proof of Respondent’s bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the website resolving from a contested domain name to divert Internet users to the websites of a UDRP complainant’s commercial competitors constituted evidence of bad faith registration and use under Policy ¶ 4(b)(iii)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent is appropriating Complainant’s mark to divert Com-plainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent’s use of the disputed <torolawnmowerpartsonline.com> domain name, which is confusingly similar to Complainant’s TORO trademark, to seek profit by causing confusion among Internet users as to the possibility of Complainant’s affiliation with the domain name demonstrates bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv). See Complainant’s Exhibit 7-9. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel there finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where a respondent’s employ-ed a domain name to resolve to a website featuring links to third-party websites that offered services similar to those of a UDRP complainant.
Finally, under this head of the Policy, the evidence shows that Respondent knew of Complainant and its rights in the TORO trademark at the time the disputed <torolawnmowerpartsonline.com> domain name was registered. This is inde-pendent proof of Respondent’s bad faith in the registration of the domain name. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014), finding bad faith registration of a domain name under Policy ¶ 4(a)(iii) where the evidence showed “actual knowledge through the name used for the domain and the use made of it.”).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <torolawnmowerpartsonline.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 20, 2014
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