MTD Products Inc v. AJ Burton / Equipment Garage
Claim Number: FA1604001670523
Complainant is MTD Products Inc (“Complainant”), represented by Christopher A. Corpus of Corpus Law, Inc., Ohio, USA. Respondent is AJ Burton / Equipment Garage (“Respondent”), represented by Jennifer Gregor, Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <troy-biltpartstore.com>, <thetroy-biltpartstore.com>, <troybiltstore.com>, <thecubcadetpartstore.com>, <cubcadetoem.com>, <cubcadetpartsdistributors.com>, and <buycubcadetparts.com>, registered with GoDaddy.com, LLC.
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.
Kenneth L. Port, Richard Hill, and David Sorkin, constituted the three judge panel.
Complainant submitted a Complaint to the Forum electronically on April 14, 2016; the Forum received payment on April 14, 2016.
On April 15, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <troy-biltpartstore.com>, <thetroy-biltpartstore.com>, <troybiltstore.com>, <thecubcadetpartstore.com>, <cubcadetoem.com>, <cubcadetpartsdistributors.com>, <buycubcadetparts.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 18, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 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@troy-biltpartstore.com, postmaster@thetroy-biltpartstore.com, postmaster@troybiltstore.com, postmaster@thecubcadetpartstore.com, postmaster@cubcadetoem.com, postmaster@cubcadetpartsdistributors.com, and postmaster@buycubcadetparts.com. Also on April 18, 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.
A timely Response was received and determined to be complete on May 13, 2016.
On May 24, 2016, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Kenneth L. Port, Richard Hill, and David Sorkin as Panelists.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the CUB CADET and TROY-BILT marks in connection with its business designing, manufacturing, and selling outdoor power equipment. Complainant has registered the TROY-BILT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 850,181, registered June 4, 1968), which demonstrates rights in the TROY-BILT mark. See Compl., at Attached Ex. I. Complainant has also registered the CUB CADET mark with the USPTO (e.g., Reg. No. 1,252,738, registered October 4, 1983), which demonstrates rights in the mark. See Compl., at Attached Ex. B; USPTO TESS Database (accessed at http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4808:hrjxt2.2.1 on May 16, 2016). Respondent’s <troy-biltpartstore.com>, <thetroy-biltpartstore.com>, <troybiltstore.com> are confusingly similar to the TROY-BILT mark, as <troy-biltpartstore.com> and <thetroy-biltpartstore.com> incorporate the mark in its entirety, adding the generic terms “part,” “store,” or “the,” and the generic top-level domain “.com.” The <troybiltstore.com> domain name incorporates the entire mark except the hyphen and adds the generic term “store” and the gTLD “.com.” Respondent’s <thecubcadetpartstore.com>, <cubcadetoem.com>, <cubcadetpartsdistributors.com>, and <buycubcadetparts.com> domain names are confusingly similar to the CUB CADET mark as they incorporate the mark in its entirety, with the exception of the space, and add generic words such as “part,” “store,” “oem,” “distributors,” and “buy,” as well as the gTLD “.com.”
Respondent has no rights or legitimate interests in the <troy-biltpartstore.com>, <thetroy-biltpartstore.com>, <troybiltstore.com>, <thecubcadetpartstore.com>, <cubcadetoem.com>, <cubcadetpartsdistributors.com>, and <buycubcadetparts.com> domain names. First, Respondent is not commonly known by the disputed domain names. Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the disputed domain names. Rather, the <thecubcadetpartstore.com> domain name resolves to a website where Respondent sells Complainant’s goods without disclosing information regarding the relationship between Complainant or Respondent or in any way indicating that Complainant is the owner of the CUB CADET mark. See Compl., at Attached Ex. L. Respondent is engaged in inactive holding of the <cubcadetoem.com>, <cubcadetpartsdistributors.com>, and <buycubcadetparts.com> domain names. See Compl., at Attached Ex. N. Respondent uses the <troy-biltpartstore.com>, <troybiltstore.com>, and <thetroy-biltpartstore.com> domain names to redirect to a website at <thetroybiltpartstore.com> (which is not part of this proceeding), where Respondent sells Complainant's goods without disclosing information regarding the relationship between Complainant or Respondent or in any way indicating that Complainant is the owner of the TROY-BILT mark. See Compl., at Attached Ex. K.
Respondent has a pattern of domain name misuse as evidenced by the registration of multiple domain names that are confusingly similar to two separate marks in this case. Respondent’s registration and use of the disputed domain names serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii). Further, Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Respondent’s inactive holding of the <cubcadetoem.com>, <cubcadetpartsdistributors.com>, and <buycubcadetparts.com> domain names is evidence of bad faith registration and use.
B. Respondent
Respondent does have rights and legitimate interests in the disputed domain names. Respondent is an authorized distributor of Complainant’s Cub Cadet products. See Compl., at Attached Ex. D. The resolving websites at the <thetroybiltpartstore.com> and <thecubcadetpartstore.com> domain names state that the store is run by Respondent. See Compl., at Ex. I and J. Respondent is not trying to corner the market in domain names. In fact, it is operating pursuant to a dealer agreement with MTD. See Resp., at Attached Ex. D (Burton Decl. ¶ 11). Further, the inactive holding of several of the disputed domain names was an oversight; Respondent intended to redirect these domain names to its website at <thecubcadetpartstore.com>.
Complainant has not submitted sufficient evidence to support any of its arguments that Respondent registered and is using the disputed domain names in bad faith. First, Respondent has not engaged in a pattern of domain name misuse, but it instead registers domain names for the purpose of operating its legitimate online parts stores. Respondent is not engaging in the disruption of Complainant’s legitimate business purposes because Respondent is not a competitor of Complainant: Complainant is a supplier of parts to Respondent. In addition, Respondent’s primary purpose in registering and using the disputed domain names is to develop its outdoor power equipment and online parts stores business, so Respondent cannot have registered the disputed domain names primarily for the purpose of disrupting Complainant’s business. Respondent registered the disputed domain names for the legitimate purpose of authorized distribution and resale of Complainant’s parts and did not intentionally or actually create a likelihood of confusion. Respondent’s inactive holding of the <cubcadetoem.com>, <cubcadetpartsdistributors.com>, and <buycubcadetparts.com> domain names is not evidence of bad faith registration and use because the inactive holding of these domain names was an oversight by Respondent rather than an intentional action. See Response, at Attached Ex. A.
C. Additional Submissions
In a Response brief, Complainant recognized and admitted that Respondent is, in fact, an authorized dealer. Complainant claims that its claim to the contrary was an oversight and not meant to mislead the Panel.
The Panel finds that Complainant has not met its burden regarding either the second factor (rights or legitimate interests) or the third factor (bad faith) and, as such, finds in favor of the Respondent.
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 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.
As Respondent seems to concede (as it does not address) this factor, the Panel finds that the disputed domain names are confusingly similar to Complainant’s valid and subsisting trademarks. Complainant adequately pleads its interest in or to the following trademarks: TROY-BILT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 850,181, registered June 4, 1968), see Compl., at Attached Ex. I; CUB CADET mark with the USPTO (Reg. No. 1,252,738, registered October 4, 1983), see Compl., at Attached Ex. B.
Even if not conceded, the Respondent’s <troy-biltpartstore.com>, <thetroy-biltpartstore.com>, <troybiltstore.com> are confusingly similar to the TROY-BILT mark, as <troy-biltpartstore.com> and <thetroy-biltpartstore.com> incorporate the mark in its entirety, adding the generic terms “part,” “store,” or “the,” and the generic top-level domain “.com.” The <troybiltstore.com> domain name incorporates the entire mark except the hyphen and adds the generic term “store” and the gTLD “.com.” Respondent’s <thecubcadetpartstore.com>, <cubcadetoem.com>, <cubcadetpartsdistributors.com>, and <buycubcadetparts.com> domain names are confusingly similar to the CUB CADET mark as they incorporate the mark in its entirety, with the exception of the space, and add generic words such as “part,” “store,” “oem,” “distributors,” and “buy,” as well as the gTLD “.com.”
As such, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered trademarks.
The Panel finds that the Complainant has failed to meet its burden to show that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (FORUM Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (FORUM Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent alleges that it does have rights and legitimate interests in the disputed domain names because it is an authorized distributor of Complainant’s Cub Cadet products. See Response, at Attached Ex. D. Complainant concedes that this is the case. Respondent further demonstrates that the resolving websites of the <thetroybiltpartstore.com> and <thecubcadetpartstore.com> domain names state that the store is run by Respondent. See Response, at Ex. I and J. Respondent apparently is not trying to corner the market in domain names, and the inactive holding of several of the disputed domain names was an oversight. Respondent appears to be making a bona fide offering of goods or services as Respondent is authorized to use Complainant’s CUB CADET mark in its distribution agreement with Complainant and because the products sold under the TROY-BILT mark are resold in their original packaging. See Response, at Attached Ex. D. Panels have found that such use may constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Inter-Tel, Inc. v. Marcus, FA 727697 (FORUM July 27, 2006) (finding that the respondent’s use of the disputed domain name in the resale of complainant’s products constitutes a bona fide offering of goods or services in accord with Policy ¶ 4(c)(i) where the respondent actually offered the goods or services at issue, the respondent used the site to sell only the trademarked goods, the site accurately disclosed the registrant’s relationship with the trademark owner, and the respondent did not try to corner the market in all domain names (which would have thus deprived the trademark owner of reflecting its own mark in a domain name)).
As such, the Panel finds Respondent’s authorized resale of Complainant’s products to constitute a bona fide offering of goods or services in accord with Policy ¶ 4(c)(i).
In addition, the Panel finds that the period of time which the parked domain names have been held is inconsequential and not long enough to trigger a finding of no rights or legitimate interests. See Casual Corner Group, Inc. v. Young, FA 95112 (FORUM Aug. 7, 2000) (finding that the respondent has rights and legitimate interests in the domain name even though he has made no use of the website at the time of the complaint. Only after a two-year period of nonuse is there an inference of a lack of bona fide intent to use the name).
As such, the Panel finds that the Complainant has failed to meet its burden regarding this factor of the Policy.
The Panel finds that the Complainant has failed to meet its burden to establish that the Respondent has engaged in bad faith use and registration. The Respondent appropriately points out that, in order to prevail on this factor, the Complainant must demonstrate any of the following non-exhaustive factors demonstrating bad faith:
(i) circumstances indicating that respondent has registered or acquired the domain name(s) primarily for the purpose of selling, renting, or otherwise transferring the domain name registration(s) 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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 engaged in a pattern of such conduct; or
(iii) 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 web site 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 respondent’s web site or location or of a product or service on respondent’s web site or location.
See Policy 4(b).
Mere allegations of bad faith are not sufficient to meet the Complainant’s burden regarding this factor. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (FORUM Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (FORUM Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
For example, the mere allegation that Respondent has registered other domain names that Complainant might find objectionable is not evidence of Respondent’s bad faith use and registration of the disputed domain names. Respondent adequately rebuts Complainant’s assumptions that other registrations or other default cases involving the Complainant amount to evidence of Respondent’s bad faith here.
Respondent points out that Complainant has not submitted sufficient evidence to support any of its arguments that Respondent registered and is using the disputed domain names in bad faith. First, Respondent apparently has not engaged in a pattern of domain name misuse, but instead it registers domain names for the purpose of operating its legitimate online parts stores. Panels have found the registration of multiple domain names not to be evidence of bad faith registration and use. See Reed Elsevier Inc. v. ECS Composites - ECS - E0, FA727967 (Forum July 26, 2006) (where the complainant held rights to <nexix.com>, the panel found that registration of the <nexiscase.com>, <nexiscases.com>, <nexis-case.com>, <nexis-cases.com>, <nexuscase.com>, <nexuscases.com>, <nexus-case.com> and <nexus-cases.com> domain names did not indicate the respondent had engaged in a pattern of bad faith registration pursuant to any of the Policy ¶ 4(b) elements).
Therefore, the Panel finds that Respondent has not engaged in a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii).
Respondent is apparently not engaging in the disruption of Complainant’s business because Respondent is a distributor for Complainant. In addition, Respondent claims that its primary purpose in registering and using the disputed domain names is to develop its outdoor power equipment and online parts stores business, so Respondent cannot have registered the disputed domain names primarily for the purpose of disrupting Complainant’s business. Respondent appears to have registered and used the disputed domain names to further Complainant’s business, not disrupt it, as any normal distributor would do. Panels have found respondents not to be engaging in bad faith disruption where a respondent and complainant were actually cooperating. See Gorstew Ltd. & Unique Vacations v. Twinsburg Travel, FA 94944 (Forum July 7, 2000) (finding no bad faith under Policy ¶ 4(b)(iii) because the respondent and the complainant are not truly competitors, but in fact are business partners where the respondent is the complainant’s agent and was acting in good faith on behalf of the complainant).
Even though it is not clear in this record that Respondent and Complainant are cooperating in fact, that cooperation is presumed by the existence of the distribution agreement between the parties. As such, as the Panel finds that the Respondent is an authorized distributor for the Complainant, it cannot be engaged in bad faith disruption pursuant to Policy ¶ 4(b)(iii).
Next, Respondent demonstratively registered the disputed domain names for the legitimate purpose of authorized distribution and resale of Complainant’s parts and did not intentionally or actually create a likelihood of confusion. Both of the websites to which the disputed domain names resolve or redirect list Respondent as the party responsible for the website. See Response, at Ex. I and J. Panels have declined to find bad faith under Policy ¶ 4(b)(iv) where a respondent registered and used a disputed domain name in connection with a legitimate interest. See DJF Assocs., Inc. v. AIB Commc’ns, FA 95612 (Forum Nov. 1, 2000) (finding the respondent has shown that it has a legitimate interest in the domain name because the respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of the dispute).
As in the DJF Associates case referenced above, the Respondent had a legitimate interest in registering the disputed domain names prior to the initiation of these proceedings because it was an authorized distributor of Complainant. As such, the Panel finds that Respondent has not engaged in bad faith attraction for commercial gain under Policy ¶ 4(b)(iv).
Respondent further claims that the inactive holding of the <cubcadetoem.com>, <cubcadetpartsdistributors.com>, and <buycubcadetparts.com> domain names is not evidence of bad faith registration and use because the inactive holding of these domain names was an oversight by Respondent rather than an intentional action. See Response, at Attached Ex. A; see also Collegetown Relocation, L.L.C. v. Concept Software & Techs. Inc., FA 96555 (Forum Mar. 14, 2001) (finding no bad faith use if it is conceivable that the respondent could make a legitimate, non-competitive use even if it had not yet done so). Given the totality of the circumstances and the lack of direct evidence to the contrary, it is reasonable to accept Respond’s explanation. As such, the Panel declines to find bad faith for the inactive holding of the <cubcadetoem.com>, <cubcadetpartsdistributors.com>, and <buycubcadetparts.com> domain names.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be denied.
Accordingly, it is Ordered that the <troy-biltpartstore.com>, <thetroy-biltpartstore.com>, <troybiltstore.com>, <thecubcadetpartstore.com>, <cubcadetoem.com>, <cubcadetpartsdistributors.com>, <buycubcadetparts.com> domain names remain with the Respondent.
Kenneth L. Port, Richard Hill, and David Sorkin, Panelists
Dated: May 31, 2016
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