Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc.
Claim Number: FA1605001674572
Complainant is Sandhills Publishing Company (“Complainant”), represented by Kathryn M. Moore, Nebraska, USA. Respondent is sudeep banerjee / b3net.com, Inc. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <machinerytraderparts.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 12, 2016; the Forum received payment on May 13, 2016.
On May 12, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <machinerytraderparts.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 May 16, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 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@machinerytraderparts.com. Also on May 16, 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 June 3, 2016.
On June 9, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant:
1. Complainant publishes “Machinery Trader,” a publication specializing in the selling of heavy construction equipment, parts and accessories, available online at Complainant’s <machinerytrader.com> domain name. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the MACHINERY TRADER mark (e.g., Reg. No. 1,434,674, registered Mar. 31, 1987). Respondent’s <machinerytraderparts.com> domain name is confusingly similar to Complainant’s MACHINERY TRADER mark. Respondent has added the descriptive term “parts” to the mark, and effectively, Complainant’s domain, in order to capitalize on the search engine algorithm autofill.
2. Respondent has no rights or legitimate interests. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Respondent is exploiting the confusing similarity between its <machinerytraderparts.com> domain name and the MACHINERY TRADER mark to divert Internet users to its website.
3. Respondent has registered and is using the <machinerytraderparts.com> domain name in bad faith. Respondent is attempting to commercially profit from a likelihood of confusion, which amounts to bad faith under Policy ¶ 4(b)(iv). Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s rights in the MACHINERY TRADER mark.
B. Respondent:
1. Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
2. Respondent has rights or a legitimate interest per Policy ¶ 4(a)(ii). Respondent makes no contentions with regards to Policy ¶ 4(c)(ii). Respondent is not a competitor of Complainant and has concurrent rights in the <machinerytraderparts.com> domain name under Policy ¶¶ 4(c)(i) and (iii).
3. Complainant has failed to prove Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) and is attempting to use reverse domain name hijacking to acquire the <machinerytraderparts.com> domain name.
1. Respondent’s <machinerytraderparts.com> domain name is confusingly similar to Complainant’s MACHINERY TRADER mark.
2. Respondent does not have any rights or legitimate interests in the <machinerytraderparts.com> domain name.
3. Respondent registered or used the <machinerytraderparts.com> domain name 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:
(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.
Complainant publishes “Machinery Trader,” a publication specializing in the selling of heavy construction equipment, parts and accessories, available online at Complainant’s <machinerytrader.com> domain name. Complainant provides evidence of its ownership of a trademark registration with the USPTO for the MACHINERY TRADER mark (e.g., Reg. No. 1,434,674, registered Mar. 31, 1987). See Compl., at Attached Appendix A. A Complainant’s registration of a mark with the USPTO establishes its rights in the mark under Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Complainant alleges Respondent’s <machinerytraderparts.com> domain name is confusingly similar to Complainant’s MACHINERY TRADER mark. Complainant’s argument centers around Respondent having misspelled the MACHINERY TRADER mark in some manner. The Panel finds that while Respondent has not misspelled the mark, it has added the descriptive term “parts” and the gTLD “.com” to the mark. The addition of a term descriptive of a complainant’s business may be seen to increase the likelihood of confusion between Respondent’s domain name and Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). Further, as a gTLD is a required part of domain name syntax, its affixation onto a mark is irrelevant in Policy ¶ 4(a)(i) analysis. See, e.g., Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007). The Panel agrees that Complainant has established its rights in the MACHINERY TRADER mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 asserts that Respondent is not commonly known as the disputed domain names, nor is Respondent in possession of licensing rights that would allow him to use the MACHINERY TRADER mark in a domain name. The Panel notes that the publically available WHOIS information lists “sudeep banerjee / b3net.com, Inc” as the registrant of record. The Panel also recalls that Respondent has not rebutted Complainant’s Policy ¶ 4(c)(ii) arguments in its response. The Panel rests on precedent and hold that Respondent does not have rights or legitimate interests under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum August 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant argues that Respondent’s use of the disputed domain names fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant takes the position that Respondent is using the confusing similarity between <machinerytraderparts.com> and the MACHINERY TRADER mark to misleadingly diverting Internet users to the disputed domain name. See Compl., at Attached Appendix B (resolving website). The Panel agrees with Complainant’s statement and holds with precedent and finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) respectively. See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Gen. Mills, Inc. v. Zuccarini, FA 97050 (Forum May 30, 2001) (“[U]nder the “Policy,” Respondent may not utilize close derivations of famous and distinctive trademarks and, thus, profit from Internet users’ misspelling the Internet destinations they desire.”).
Complainant contends that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant submits that Respondent is using its MACHINERY TRADER mark in a general scheme to confuse and divert internet users to its <machinerytraderparts.com> domain name. Prior panels have found bad faith under Policy ¶ 4(b)(iv) where the domain name was used to create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The Panel agrees and finds bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that it has held and used the MACHINERY TRADER trademark for a long period of time. The Panel finds hat Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <machinerytraderparts.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 17, 2016
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