Sandhills Publishing Company v. Dmitry Bakurov
Claim Number: FA1605001674575
Complainant is Sandhills Publishing Company (“Complainant”), represented by Kathryn M. Moore, Nebraska, USA. Respondent is Dmitry Bakurov (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <machinery-trader.com>, registered with NamePal.com, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 12, 2016; the Forum received payment on May 13, 2016.
On May 18, 2016, NamePal.com, LLC confirmed by e-mail to the Forum that the <machinery-trader.com> domain name is registered with NamePal.com, LLC and that Respondent is the current registrant of the name. NamePal.com, LLC has verified that Respondent is bound by the NamePal.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 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 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@machinery-trader.com. Also on May 19, 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 June 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in MACHINERY TRADER and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a publishing house and the owner of the trademark MACHINERY TRADER (stylized) which is registered across Europe as EUTM Reg. No. 9921511, registered from April 26, 2011;
2. the disputed domain name was registered on February 23, 2013;
3. the domain name redirects users to a website promoting the sale of construction equipment, and parts and accessories therefor; and
4. there is no commercial relationship between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is sufficient to establish trademark rights. Complainant does not provide direct evidence of its registration of the trademark with a national authority, but refers by registration number to a European (EUTM) trademark registration and asserts rights in the words, MACHINERY TRADER.
Panel has made its own research and found a logo-style trademark incorporating the words, MACHINERY TRADER, presented in a stylized fashion and combined with graphical elements. Although Panel has taken the view that, on balance, the Complainant should be considered in this case to have trademark rights for the purposes of the Policy[i], Panel nonetheless would in the future expect Complainant be made full and frank disclosure of the basis of its claim to such rights.[ii]
The disputed domain name differs from the trademark in inconsequential ways - namely, by hyphenation of the words of the trademark and by addition of a gTLD. The top-level domain,“.com”, can be ignored for the purposes of comparison.[iii] The hyphenation is trivial.[iv] Panel finds that these additions do not significantly alter the identity of the trademark which remains the recognizable element of the domain name.
Panel is satisfied that the disputed domain name is confusingly similar to Complainant’s trademark and so Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[v]
The publicly available WHOIS information identifies “Dmitry Bakurov” as the registrant of the domain name. Accordingly, in the absence of a Response there is no prima facie evidence that Respondent might be known – commonly or otherwise - by the disputed domain name.
There is no evidence that Respondent has any trademark rights. The domain name redirects Internet users to a website which promotes goods which compete in the marketplace with the goods advertised by reference to the trademark. As such, there is no evidence that Respondent provides a bona fide offering of goods or services or that there is legitimate noncommercial or fair use of the domain name.[vi]
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response there is nothing on which a claim to rights or interests in the domain name can rest and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 has engaged in a pattern of such conduct; or
(iii) the 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 website 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 the respondent’s website or location or of a product or service on the site or location.’
In this case Panel finds that Respondent’s conduct falls squarely under paragraph 4(b)(iv) above. Panel has found the domain name to be confusingly similar to the trademark. The resolving website exists for commercial gain. In terms of the Policy, Respondent is using the domain name to intentionally attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with the trademark.[vii]
Panel finds registration and use in bad faith and the third limb of the Policy established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <machinery-trader.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: June 18, 2016
[i] A borderline decision it should be added.
[ii] See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
[iii] See PepsiCo, Inc. v. Shah, FA 103934 (Forum Mar. 4, 2002); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000))
[iv] See, e.g., Allstate Insurance Company v. HI-LIVE / TRIAL VERSION, FA 1621874 (Forum July 8, 2015) (stating, “As a general rule, both punctuation-related alterations (such as adding a hyphen) and the addition of a gTLD are insufficient to distinguish a domain name from the mark at issue.”).
[v] See Do The Hustle, LLC v. Tropic Web, D2000- 0624 (WIPO Aug. 21, 2000).
[vi] See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”
[vii] See, for example, Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
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