Clark Equipment Company v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1604001672697
Complainant is Clark Equipment Company (“Complainant”), represented by Laura M Konkel of Michael Best & Friedrich LLP, United States of America. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bobcat-manual.net>, registered with Internet Domain Service BS Corp.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 29, 2016; the Forum received payment on April 29, 2016.
On May 4, 2016, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <bobcat-manual.net> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 May 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 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@bobcat-manual.net. Also on May 4, 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 26, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 is a provider of compact equipment for construction, landscaping, agriculture, and related goods and services.
Complainant has registered the BOBCAT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,153,505, registered May 5, 1981).
Respondent’s <bobcat-manual.net> is confusingly similar to Complainant’s BOBCAT mark. The addition of a hyphen, the term “manual”, and the generic top level domain (“gTLD”) “.net” are insufficient to differentiate the disputed domain from the BOBCAT mark.
Respondent lacks rights or a legitimate interest in the <bobcat-manual.net> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to make use of the BOBCAT mark. Respondent is not making a bona fide offering of goods or a noncommercial or fair use of the disputed domain name. Respondent is using the <bobcat-manual.net> domain name to attempt to pass itself off as Complainant and sell unauthorized copies of Complainant’s product manuals.
Respondent recently lost a similar UDRP proceeding regarding the domain name <bobcatmanual.net>. The fact pattern in that case was identical to that in the instant case and the registration of the currently at-issue domain name was in response to the UDRP filing challenging Respondent’s use of the <bobcatmanual.net> domain name.
Respondent has registered and is using <bobcat-manual.net> in bad faith. Respondent is using the disputed domain to sell unauthorized copies of Complainant’s copyright protected product manuals. Respondent’s use of the disputed domain name in this manner disrupts Complainant’s business while attracting Internet users to Respondent’s website for commercial gain. Last, Respondent’s use of a privacy shield is further evidence of bad faith registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the BOBCAT mark through registration of the mark with the USPTO and otherwise.
Respondent registered the at‑issue domain name subsequent to Complainant acquiring rights in the BOBCAT mark.
Respondent is not associated with Complainant nor authorized to use Complainant’s trademark.
The at‑issue domain name addresses a website that inappropriately impersonates Complainant’s official website and offers Complainant’s copyrighted service manuals for sale.
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.
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 (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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registrations for BOBCAT conclusively demonstrates that Complainant holds rights in a mark for the purposes of Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s domain name contains Complainant’s entire BOBCAT trademark to which is added a hyphen, the descriptive term “manual” and the top-level domain name “.net.” The addition of a hyphen and generic top-level domain “.net” has no impact on the Panel’s analysis under Policy ¶4(a)(i). See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Additionally, the inclusion of the descriptive term “manual” in Respondent’s domain name actually promotes confusing similarity as the term “manual” is suggestive of Complainant’s product service manuals. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). Therefore, the Panel concludes that Respondent’s <bobcat-manual.net> domain name is confusingly similar to Complainant’s BOBCAT mark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Domain Admin / Whois Privacy Corp” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <bobcat-manual.net> domain name. The Panel therefore concludes that Respondent is not commonly known by the <bobcat-manual.net> domain name for the purposes of Policy ¶ 4(c)(ii). SeeCoppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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).
Respondent’s <bobcat-manual.net> domain name addresses a website that displays Complainant’s BOBCAT mark, uses pictures from Complainant’s official website and offers misappropriate copies of Complainant’s copyrighted product service manuals for sale. In this manner Respondent seeks to pass itself off as Complainant, capitalize on Complainant’s BOBCAT mark, and profit from the unauthorized sale of Complainant’s proprietary documents. Using the <bobcat-manual.net> domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(iii). See Caterpillar Inc. v. Huth, FA 169056 (Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and interests, Respondent uses the <bobcat-manual.net> domain name to offer misappropriated copies of Complainant’s manuals. Such an offering is in direct competition with Complainant. Moreover these circumstances disrupt Complainant’s business and demonstrate Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii). See Lawrence Univ. v. nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
As also mentioned above, Respondent seeks to profit by passing itself off as Complainant by reproducing the BOBCAT mark and the look and feel of Complainant’s official website on the <bobcat-manual.net> website. The charade is designed to aid Respondent in the sale of unauthorized copies of copyright-protected product service manuals. Respondent’s scheme to use the domain name to fool internet users into believing that there is some affiliation between Complainant and Respondent in the hope of fostering commercial gain demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). 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); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). The fact that Respondent lost a prior UDRP proceeding which mirrors the instant circumstances indicates Respondent’s redundant conduct to be nothing less than despicable.
Finally, the Panel finds that Respondent was aware of Complainant’s BOBCAT trademark at the time it registered the at-issue domain name. Respondent’s prior knowledge is evinced from the notoriety of Complainant’s BOBCAT trademark, the fact that Respondent lost a UDRP case regarding the same BOBCAT trademark and the same fact pattern as here, as well as from the mimicking appearance of Respondent’s <bobcat-manual.net> website. Indeed, Respondent’s impersonation of Complainant through its confusingly similar <bobcat-manual.net> domain name and accompanying website in itself shows bad faith. See Jupiter Investment Management Group Limited v. N/A, Robert Johnson, D2010-0260 (WIPO April 12, 2010) (“In cases where there is full scale reproduction of another's site there may well be both copyright infringement and bad faith but it is the unauthorized, unjustified and wholesale impersonation that justifies the bad faith finding.”). Respondent’s knowledge of Complainant’s trademark at or before the time it registered the at-issue domain name additionally demonstrates that Respondent registered and used the domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration)"; see also Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith…).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bobcat-manual.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 1, 2016
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