MTD Products Inc v. Crispin Thomas
Claim Number: FA1604001671981
Complainant is MTD Products Inc (“Complainant”), represented by Christopher A. Corpus of Corpus Law Inc., Ohio, United States. Respondent is Crispin Thomas (“Respondent”), Trinidad and Tobago.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cubcadet-manuals.com>, registered with Wild West Domains, LLC.
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 Forum electronically on April 26, 2016; the Forum received payment on April 26, 2016.
On April 27, 2016, Wild West Domains, LLC confirmed by e-mail to the Forum that the <cubcadet-manuals.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 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@cubcadet-manuals.com. Also on April 27, 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 May 19, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
Operating under the name and mark CUB CADET, Complainant is a market leader in the design, manufacture and sale of outdoor power equipment worldwide.
Complainant holds a trademark registration for the CUB CADET trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,068,347, registered June 10, 1997.
Respondent registered the domain name <cubcadet-manuals.com> on or about
December 29, 2015.
The domain name is confusingly similar to Complainant’s CUB CADET mark.
Respondent has not been commonly known by the domain name.
Respondent is not an authorized retailer or reseller of Complainant’s products.
Complainant has not licensed or otherwise authorized Respondent to use Complainant’s CUB CADET trademark in a domain name.
Respondent is not making a bona fide offering of goods or services by means of the domain name.
Respondent is not making a legitimate non-commercial or fair use of the domain name.
The domain name resolves to a web site which purports to offer for sale, at a price of $19.99 each, copies of user manuals for Complainant’s products.
Complainant’s user manuals are protected by copyright.
Complainant offers the same manuals to its customers without charge.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent’s use of the domain name is an effort to confuse Internet users for Respondent’s commercial gain.
Respondent registered the domain name while knowing of Complainant and its rights in the CUB CADET mark.
Respondent registered and uses the domain name 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 cancelled 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable 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 CUB CADET trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Trinidad and Tobago). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the domain name <cubcadet-manuals.com> is confusingly similar to Complainant’s CUB CADET trademark. The domain name contains the mark in its entirety, with only the deletion of the space between its terms, the addition of a hyphen and the generic term “manuals,” which describes an aspect of Complainant’s business, and 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 Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (finding that confusing similarity exists where a disputed domain name contains a UDRP complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and a top-level domain).
See also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between the terms of the mark of another and the addition to it of a gTLD do not establish distinctiveness from that mark under Policy ¶ 4(a)(i)).
Further see Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003):
The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a 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 (Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):
Complainant must … 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, … 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 determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names which are cognizable under the Policy.
We begin by noting that Complainant contends, and that Respondent does not deny, that Respondent has not been commonly known by the domain name <cubcadet-manuals.com>, that Respondent is not an authorized retailer or reseller of Complainant’s products, and that Complainant has not licensed or otherwise authorized Respondent to use Complainant’s CUB CADET trademark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Crispin Thomas,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the contested domain name so as to acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See, for example, Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so failed to demonstrate that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, showing that that respondent was commonly known by the domain name, and where a UDRP complainant asserted that it did not license or otherwise authorize that respondent’s use of its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services by means of the domain name, or a legitimate non-commercial or fair use of the domain name, in that the domain name resolves to a web site which purports to offer for sale, at a price of $19.99 each, copies of various user manuals for Complainant’s products, which manuals are protected by copyright, and which
manuals Complainant offers to its customers without charge. This employment of the domain name is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that a respondent’s use of a UDRP complainant’s mark in a domain name which it employed to redirect Internet users to respondent’s own website for commercial gain did not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the domain name <cubcadet-manuals.com>, as alleged in the Complaint, disrupts complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See, on parallel facts, MTD Products v. Roger Smith, FA 552064 (National Arb. Forum May 210, 2014).
We are also convinced by the evidence that Respondent uses the <cubcadet-manuals.com> domain name, which is confusingly similar to Complainant’s CUB CADET trademark, to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name and its resolving web site. Under Policy ¶ 4(b)(iv), this too is proof of Respondent’s bad faith in the registration and use of the domain name. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a Respondent’s domain name resolved to a website offering links to third-party websites selling services similar to those of a UDRP complainant).
Finally, under this head of the Policy, it is evident that Respondent knew of Complainant and its rights in the CUB CADET trademark when it registered the
<cubcadet-manuals.com> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See, for example, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (finding, under Policy ¶ 4(a)(iii), that a UDRP respondent registered a domain name in bad faith where that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel therefore 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 <cubcadet-manuals.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 23, 2016
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