Sandhills Publishing Company v. D Pontiac
Claim Number: FA1602001661478
Complainant is Sandhills Publishing Company (“Complainant”), represented by Kathryn M. Moore, Nebraska, USA. Respondent is D Pontiac (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwtractorhouse.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 18, 2016; the Forum received payment on February 23, 2016.
On February 21, 2016, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <wwwtractorhouse.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 February 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2016 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@wwwtractorhouse.com. Also on February 24, 2016, 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 March 17, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the TRACTORHOUSE mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,035,759, registered December 27, 2005). Respondent’s disputed <wwwtractorhouse.com> domain is confusingly similar to the TRACTORHOUSE mark as the domain merely removes the period between the “www” and the mark, taking advantage of a typing error, and adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name based on WHOIS information and a lack of any evidence to the contrary. Further, Respondent’s use of the domain is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the domain to display click through advertisements through which Respondent presumably receives commercial profit.
Respondent registered and is using the disputed domain name in bad faith. Respondent’s domain competes and disrupts Complainant’s business. Respondent’s confusingly similar domain is also used in bad faith to divert internet users from Complainant’s legitimate website to Respondent’s domain for Respondent’s commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
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(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. 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.”).
Complainant has rights in the TRACTORHOUSE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,035,759, registered December 27, 2005). Registration with the USPTO (or any other similar governmental authority) demonstrates rights in a mark under Policy ¶4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶4(a)(i)). Registration in a respondent’s country of operation is not required, so long as rights can be established somewhere. See 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction), Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction), Homer TLC, Inc. v. shahrul naim, FA1410001583870 (November 18, 2014) and Randall E. Kay v. SEBASTIAN KLEVEROS / COMCEPT - INTERNET VENTURES FA1602001659119 (March 18, 2016). Complainant has rights in the TRACTORHOUSE mark under Policy ¶4(a)(i).
Complainant claims Respondent’s disputed <wwwtractorhouse.com> is confusingly similar to Complainant’s TRACTORHOUSE mark. Respondent’s domain removes the period between the mark and the “www,” as well as adding the gTLD “.com.” The removal of a period, combining “www” and a mark, has been deemed by past panels as insufficient in overcoming a finding of confusing similarity under a Policy ¶4(a)(i) analysis. See Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark). This Panel agrees with that analysis. Panels have also held adding the gTLD “.com” (or any other TLD for that matter) is irrelevant to a Policy ¶4(a)(i) analysis because domain name syntax requires a TLD. See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"). The disputed <wwwtractorhouse.com> domain name is confusingly similar to the TRACTORHOUSE mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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 claims Respondent has not been commonly known by the disputed domain name. The currently available WHOIS information indicates Respondent registered the domain claiming to be “D Pontiac,” which does not appear to resemble the domain at issue in this Proceeding. The WHOIS information was originally masked by a privacy service. Respondent did not submit a response in this proceeding. In the absence of other information, a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of information to the contrary. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). There is no obvious connection between Respondent’s given name and the disputed domain name. Respondent has not been commonly known by the <wwwtractorhouse.com> domain under Policy ¶4(c)(ii).
Complainant claims Respondent’s use of the disputed domain is not (i) a bona fide offering of goods or services or (ii) a legitimate noncommercial or fair use. Respondent uses the disputed domain to host a generic landing page with links with titles such as, “Used Tractors,” “Agriculture Farm Equipment,” and “John Deere Tractors for Sale.” Panels have routinely held using a confusingly similar domain to resolve to a website hosting commercial links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Wells Fargo & Co. v. Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that the respondent’s use of the complainant’s WELLS FARGO mark to redirect Internet users to a domain name featuring magazine subscriptions was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name). This Panel concurs with such decisions. Respondent’s use does not fall within the exceptions of Policy ¶4(c)(i) or ¶4(c)(iii).
Respondent registered the domain name using a privacy service. Nothing on the resolving web site identified Respondent. Therefore, Respondent cannot have acquired any rights simply due to its registration of the domain name. Respondent has done nothing to publicly associate itself with the disputed domain name. This Panel must conclude Respondent has acquired no rights.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent uses the likelihood of confusion between the disputed domain name and Complainant to attract Internet users for commercial gain by using hyperlinks to Complainant’s competitors. Past panels have found bad faith registration and use pursuant to Policy ¶4(b)(iv) where a respondent’s disputed domain name resolved to a website displaying links to competing products and services. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). This Panel generally concurs with those decisions. Even if Respondent is not getting actual cash, Respondent is likely getting free web site hosting in exchange for posting “pay per click” links. This Panel finds Respondent engaged in bad faith registration and use pursuant to Policy ¶4(b)(iv).
Complainant claims Respondent has engaged in the practice of typosquatting by misspelling Complainant’s mark with the intent to intercept and siphon off traffic from its intended destination. Such language is a shortcut for what the UDRP actually says. Simply saying “typosquatting” does not violate the UDRP. Once the UDRP standards have been met, this element will have been satisfied. This aspect of the complaint does not satisfy the UDRP. There is no bad faith found regarding this claim.
Respondent registered the disputed domain name using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption. This Panel is willing to find bad faith for this reason alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <wwwtractorhouse.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, March 24, 2016
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