WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tractor Supply Co. of Texas LP v. Domains Ventures
Case No. D2007-0494
1. The Parties
The Complainant is Tractor Supply Co. of Texas LP, Nashville, Tennessee, United States of America, represented by Waller Lansden Dortch & Davis, LLP, United States of America.
The Respondent is Domains Ventures, Xiamen, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <mytsc.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2007. On April 2, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On April 3, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2007.
The Center appointed Clive L. Elliott as the sole panelist in this matter on June 4, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant has 678 stores in 37 states in the United States of America and is one of the largest retail stores in America. It is among the leading farm and ranch brands in the United States of America. Complainant’s retail stores operate under the TSC and TSC TRACTOR SUPPLY CO. marks.
Complainant’s online store is located at “www.mytscstore.com”.
Complainant has obtained the following trademark registrations in the United States of America:
- United States trademark registration number 1,846,015 for TSC TRACTOR SUPPLY CO. (and design);
- United States trademark registration number 884,786 for TSC (and design);
- United States trademark registration number 894,808 for TSC (standard characters).
5. Parties’ Contentions
Complainant asserts that it has acquired far-reaching common law trademark rights in the <mytscstore.com> domain name based on its widespread use in commerce since 2002.
Complainant’s TSC mark is used to identify specifically its chain of retail stores and has acquired widespread consumer goodwill. Complainant asserts that it has invested substantial time, expense and effort in the creation of goodwill and fame surrounding the TSC and TSC TRACTOR SUPPLY CO marks and has acquired valid and far-reaching common law trademark rights therein.
Complainant states that Respondent is using the Disputed Domain Name for commercial purposes to provide paid advertisement links and commercial “pop up” advertisements. The links on the site residing at the Disputed Domain Name are for competitors of Complainant, namely unaffiliated sellers and dealers of tractor accessories and farm equipment, including some that linked using Complainant’s registered marks. In addition, there are numerous links on the Disputed Domain Name to adult-oriented and pornographic websites.
Complainant contends that Respondent’s use of Complainant’s TSC mark in the Disputed Domain Name address is confusingly similar because it incorporates the registered mark in its entirety and only adds a common term “my” and the generic top-level domain “.com”.
Complainant asserts that Respondent is using, or has authorized the use of, the Disputed Domain Name to participate in a revenue-generating program whereby domain name holders redirect Internet users to other commercial websites for profit.
Complainant contends that based on all of the foregoing, Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name without intent for commercial gain and intent to mislead consumers.
Complainant states that Respondent is using the Disputed Domain Name to provide links to sites promoting farm equipment or tractor accessories that are almost identical to the goods and services offered by Tractor Supply Company. It is submitted that using a domain name confusingly similar to a complainant’s mark to link to websites of the complainant’s competitors constitutes “bad faith” under the Policy.
Complainant further contends that repeated findings of bad faith are indicative of continued bad faith motives and that Respondent has been a party to at least 30 WIPO and NAF domain name dispute decisions.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the domain name Complainant must prove that:
(i) the domain name 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.
Having considered the Complaint, the Panel finds that all requirements of paragraph 4(a) of the Policy are met.
A. Identical or Confusingly Similar
The evidence in this case is clear and largely un-contradicted. Complainant has clearly used the TSC mark for a number of years and registered the trademark. There is sound basis for its assertion that the mark is associated with and has become synonymous with it, throughout the United States of America. The Panel finds that Complainant has traded in a significant way for many years and that it has the necessary rights in and to the trademark TSC.
The Disputed Domain Name is not identical to Complainant’s TSC trademark. However, Complainant contends that Respondent’s use of Complainant’s TSC mark in the Disputed Domain Name is confusingly similar because it incorporates the registered mark in its entirety and only adds a common term “my” and the generic top-level domain “.com”. The Panel accepts this argument, given that whatever insignificant elements are added, the distinctive portion of Complainant’s trademark has been adopted. On this basis, it is found that the Disputed Domain Name is virtually identical and certainly confusingly similar to the trademark TSC.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
As has been noted previously, once a complainant makes a prima facie case the burden shifts to the respondent to establish rights or legitimate interests in the disputed domain name; see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (finding that once the complainant asserts that the respondent does not have rights or legitimate interests with respect to the domain name, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name). The Panel concludes that, on the basis of the Complaint, that a prima facie case is established under this ground.
Respondent has not lodged a Response. Accordingly, the Panel needs to look at the evidence before it in order to make an assessment of the position.
Complainant asserts that Respondent is using the Disputed Domain Name to provide paid advertisement links and commercial “pop up” advertisements to sites of Complainant's competitors and to adult-oriented and pornographic websites. On the basis of what is alleged and is un-contradicted, it is reasonable to infer that no right or legitimate interest exists on the part of the Respondent and that the Respondent’s motives are not legitimate.
Thus the Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
It is now well-established as to what constitutes bad faith under the Policy. Given what appears to be the substantial reputation and goodwill in the Complainant’s trademark and specifically due to its use of its trademark, it is reasonable to infer that the Disputed Domain Name was probably chosen by Respondent for the reasons contended by Complainant. Put another way, it is difficult to see how (on the current record) Respondent can claim to have registered and been using the Disputed Domain Name in good faith.
In this regard, Complainant points out that repeated findings of bad faith may be indicative of continued bad faith motives, relying on Tractor Supply Company v. Forum LLC, WIPO Case No. D2006-1320 (WIPO December 15, 2006). Complainant states that Respondent has been a party to at least 30 WIPO and NAF domain name dispute decisions. In the absence of any effort to refute Complainant’s assertions the Panel accepts them and is satisfied that the third element of the Policy has been met.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <mytsc.com>be transferred to the Complainant.
Clive L. Elliott
Dated: June 28, 2007