WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Deere & Company v. XC2 (Moniker Privacy Services)

Case No. D2007-1805

 

1. The Parties

Complainant is Deere & Company (“Complainant”), a corporation incorporated under the laws of the State of Delaware, United States of America, with a principal place of business located in Moline, State of Illinois, United States of America.

Respondent was originally named as Moniker Privacy Services located in Pompano Beach, Florida, United States of America. On December 22, 2007, the Complainant named XC2 as the true registrant. For purposes of this Decision, Respondent shall be referred to as “Respondent” or “XC2”.

 

2. The Domain Names and Registrar

The domain names at issue are <deeere.com>, <deeree.com>, <deereandco.com>, <johndeerelandscape.com> (the “Disputed Domain Names”). The registrar is Moniker Online Services, Inc. (the “Registrar”) located in Pompano Beach, Florida, United States of America.

 

3. Procedural History

On December 5, 2007, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On December 9, 2007, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On December 10, 2007, the Center received hardcopy of the Complaint. The Complainant paid the required fee.

On December 18, 2007, after the Center sent a Request for Verification to the Registrar on December 6, 2007 (together with several reminders), requesting verification of registration data, the Registrar provided information regarding a change in registrant information.

On December 19, 2007, the Center sent Complainant a Notice of Change in Registrant Information. On December 22, 2007, the Center received an Amendment to the Complaint from Complainant via email. On December 28, 2007, the Center received the Amendment in hardcopy.

The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On December 28, 2007, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On November 18, 2000, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On February 5, 2008 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-member panel consisting of the Panel.

 

4. Factual Background

Complainant is a manufacturer and distributor of equipment and provider of services relating to farm equipment and later expanding into forestry equipment, construction equipment, lawn and garden tractors, movers and other outdoor equipment under the names DEERE and JOHN DEERE. Complainant has grown to become a worldwide corporation, now doing business under the trade name DEERE & COMPANY in over 160 countries, and employing approximately 47,000 people around the world. In 2006, Complainant reported net income of $1.69 billion on total net sales and revenues of $22.15 billion. Complainant’s DEERE and JOHN DEERE branded products have generating many billions of dollars of sales.

Complainant has obtained numerous United States registrations for its trademarks comprised of DEERE and JOHN DEERE, many of which are now incontestable pursuant to Sections 15 and 33(b) of the Lanham Act, 15 U.S.C. 1065 and 115(b). Complainant also owns numerous registrations for similar marks comprised of the terms DEERE and JOHN DEERE in jurisdictions around the world. The trademarks of Complaint shall be referred to in this decision as the “DEERE and JOHN DEERE Marks”.

Complainant has registered several top-level domain names comprised of its DEERE and JOHN DEERE Marks, including without limitation <deere.com> (1990), <johndeere.com> (1997), <johndeeretractors.com> (1998), <deerelandscape.com> (1999), <johndeerelandscape.com> (2001) and <deereandcompany.com> (2004) which were registered on the dates indicated after each domain name.

On or about November 27, 2004, Respondent XC2 registered the domain names <deereandco.com>, <deeere.com> and <deeree.com>. Then on January 24, 2005, Respondent XC2 registered the domain name <johndeereandcompany.com>.

Complainant and its counsel sent multiple letters regarding the Disputed Domain Names to XC2. After Complainant’s repeated attempts to contract XC2 proved unsuccessful, its counsel sent XC2 a letter on October 3, 2007, to the Post Office Box address provided by XC2 in the WHOIS information database. That letter was returned as unclaimed. XC2 has also failed to respond to Complainant’s counsel’s October 3, 2007 and October 29, 2007 correspondence sent via email to <sales@xc2.com>, the email address listed in Respondent XC2’s WHOIS contact information.

Complainant was compelled to name Moniker Privacy Services as the sole respondent in its initial Complaint. Upon discovering that XC2 was the true owner of the Disputed Domain Names, Complainant filed the Amended Complaint.

 

5. Parties’ Contentions

A. Complainant’s contentions

(i) Complainant contends that it has registrations of the DEERE and JOHN DEERE Marks, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of it DEERE and JOHN DEERE Marks. 15 U.S.C. 1115. Complainant further alleges that certain of its registrations are incontestable and conclusive evidence of its exclusive right to use the mark in connection with the stated goods. 15 U.S.C. 1065 and 115(b).

(ii) Complainant contends that it is the owner of trademarks in the names DEERE and JOHN DEERE. Since 1868, and long before the conduct of Respondent alleged herein, Complainant has expended substantial effort and hundreds of millions of dollars to promote and advertise its equipment and services beginning with farm equipment and expanding into forestry equipment, construction equipment, law and garden tractors, movers and other outdoor equipment under the DEERE and JOHN DEERE Marks.

Complainant further contends that the DEERE & COMPANY trade name and the DEERE and JOHN DEERE Marks have become known to consumers worldwide as symbolizing Complainant as a source of extremely high-quality products.

Complainant further contends that it has built up substantial goodwill in its DEERE Name and Marks among consumers both in the United States and through out the world. The DEERE Name and Marks are among Complainant’s most valuable assets.

(iii) Complainant argues that the Disputed Domain Names are confusingly similar to the DEERE and JOHN DEERE Marks. Complainant asserts that XC2’s <deeree.com> and <deeere.com> Disputed Domain Names are virtually identical and confusingly similar to Complainant’s DEERE and JOHN DEERE Marks because the <deeree.com> and <deeere.com> Disputed Domain Names are merely typographical misspellings of Complainant’s famous DEERE Mark. Similarly, the <deereandco.com> and <johdeerelandscape.com> Disputed Domain Names are virtually identical and confusingly similar to the Complainant’s DEERE and JOHN DEERE Marks because they consist of Complainant’s Marks plus other non-distinctive terms. The <deereandco.com> Disputed Domain Name consists of Complainant’s DEERE Mark plus the term “and co”, standing for “and company”. The <johdeerelandscape.com> Domain Name consists of the Complainant’s JOHN DEERE Mark plus the term “landscape”. Complainant asserts that adding merely descriptive terms to a famous mark is not sufficient to distinguish a domain name from the mark. Moreover, Complainant uses its <deereandcompany.com> domain name to forward Internet users to its official website maintained at <deere.com> and used the <johdeerelanscapes.com> domain name in connection with the main website for its fast-growing JOHN DEERE LANDSCAPES business. Thus, the addition of the terms “and co” and “landscape” to Complainant’s DEERE and JOHN DEERE Marks, respectively, does not give the <deereandco.com> and the <johndeerelandscape.com> Disputed Domain Names an overall impression distinct from Complainant’s DEERE and JOHN DEERE Marks and their associated domain names and corresponding websites. Therefore, Complainant asserts that each of the Disputed Domain Names is confusingly similar to the DEERE and JOHN DEERE Marks, pursuant to Paragraph 4(a)(i) of the Policy.

(iv) Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Names.

Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Names under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Disputed Domain Names in connection with the bona fide offering of goods or services.

Complainant further contends that since registration, the Disputed Domain Names have been used on a pay-per-click website featuring links to various third-party sites, including sites offering goods that compete with Complainant’s DEERE and JOHN DEERE branded goods. In addition, Internet users attempting to close or to use the back button to exit from the pay-per-click websites associated with the Disputed Domain Names are subjected to pop-up windows for various commercial websites owned by third parties. Because this conduct is intended to capture Internet traffic using deceptive practices, Respondent cannot be found to have offered bona fide goods or services.

Complainant further contends that Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Names under Paragraph 4(c)(ii) because it is not commonly known under any of the Disputed Domain Names. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied to use the DEERE and JOHN DEERE Marks. Nothing in the WHOIS information for the Disputed Domain Names indicates that XC2 is referred to or commonly known by any of the Disputed Domain Names. XC2 does not own any United States, European Community or international trademark registrations for the terms “Deere”, “John Deere”, “deeere”, “deeree”, “johndeereelandscape” or “deereandco”.

Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Names under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Disputed Domain Names without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainant alleges that Respondent has deliberately registered the Disputed Domain Names to trade on the DEERE and JOHN DEERE Marks.

(v) Complainant contends that Respondent registered and is using the Disputed Domain Names in bad faith in violation of Paragraph 4(a)(iii).

Complainant further contends that given the fame of Complainant’s DEERE and JOHN DEERE Marks, it is inconceivable that XC2 innocently registered the Disputed Domain Names without having a design to exploit their similarity to Complainant’s Marks. Any claim by Respondent that it was unaware of Complainant and its business is belied by the fact that the website associated with <deereandco.com> contained the DEERE and JOHN DEERE Marks as well as a link to Complainant’s “deere.com” website. Complainant further contends that XC2 indisputably registered and commenced use of the Disputed Domain Names with knowledge of Complainant’s prior use of the DEERE and JOHN DEERE Marks of Complainant’s prior use of the DEERE and JOHN DEERE Marks in order to benefit from and capitalize and trade upon the reputation and goodwill that had long been established by Complainant in the DEERE and JOHN DEERE Marks.

Complainant alleges that XC2 registered and is using the Disputed Domain Names in order to confuse the public as to the source, sponsorship or affiliation of the websites associated with the Disputed Domain Names, and to trade upon the significant goodwill associated with Complainant’s famous DEERE and JOHN DEERE Marks in violation of the Policy. Specifically Complainant believed that XC2 intentionally registered and used both the “typosquatted” variations of the Complainant’s famous DEERE and JOHN DEERE Marks as well as direct copies of Complainant’s famous DEERE and JOHN DEERE Marks combined with other terms in order to attract Internet users and then redirect them to advertising-driven websites, from which XC2 received a commission or referral fee.

Complainant further contends that its letter were returned as unclaimed, suggesting that XC2 was either maintaining a fictitious mailing address or an inactive one (both of which are in violation of the Registrant’s Contract with the Registrar as required by the Registrar Accreditation Agreement). XC2 has also failed to respond to correspondence from Complainant’s counsel dated October 3, 2007 and October 29, 2007 sent via email to sales@xc2.com, the email address listed in Respondent XC2’s WHOIS contact information.

Sometime after sending the foregoing correspondence, Complainant’s counsel discovered that the WHOIS information for the Disputed Domain Names had been modified and XC2 was no longer listed as the nominative owner of the Disputed Domain Names. Complainant believed that XC2 remained the true owner of the Disputed Domain Names. This belief was bolstered by the facts that: (a) the content of the websites associated with the Disputed Domain Names did not change when the WHOIS information for the Disputed Domain Names was changed; (b) Moniker Privacy Services is a proxy service that enables a registrant such as XC2 to conceal its identity; and (c) the domain servers used to host the pay-per-click website associated with the Disputed Domain Names were unchanged. Complainant believed that the evidence confirmed that Moniker Privacy Services was merely acting as a proxy, and that XC2 remained the true owner of the Disputed Domain Names. Complainant asserts that this is further evidence of the bad faith registration and use of the Disputed Domain Names by Respondent.

B. Respondent’s contentions

Respondent has chosen not to respond to the allegations in the Complaint or Amended Complaint.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772, n. 3.

Failure to File a Response

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or no legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

Enforceable Trademark Rights

Complainant contends that it is the owner of trademarks in the DEERE and JOHN DEERE Marks, that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the DEERE and JOHN DEERE Marks. 15 U.S.C. 1115. Complainant further alleges that at least some of its registrations are incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated goods. 15 U.S.C. 1065 and 1115(b).

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Respondent has not contested the assertions by Complainant that it has valid registrations of the trademark. Therefore, the Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights in the trademark.

Identity or Confusing Similarity

Complainant further contends that the Disputed Domain Names are confusingly similar to the DEERE and JOHN DEERE Mark pursuant to the Policy paragraph 4(a)(i).

Complainant argues that the Disputed Domain Names are confusingly similar to the DEERE and JOHN DEERE Marks because they are either typographical misspellings of Complainant’s famous Marks or consist of Complainant’s Marks plus another non-distinctive term, not sufficient to distinguish a the Disputed Domain Marks.

Respondent has not contested the assertions by Complaint that the Disputed Domain Names are confusingly similar to the DEERE and JOHN DEERE Marks.

The Disputed Domain Names which are misspelling or deliberate typographical errors of the DEERE Mark are likely to cause confusion, mistake or deception as to the source, origin, sponsorship or approval of Respondent’s services and are not sufficiently distinctive to escape being confusingly similar to Complainant’s DEERE Mark. See, Pom Wonderful, LLC v. XC2 c/o Internet Coordinator, NAF Case FA 933070 (ordering transfer) (<pomwonderfull.com> domain name registered by XC2 comprised of a typographical misspelling of the complainant’s POM WONDERFUL mark held to be confusingly similar); see also, ESPN, Inc. v. XC2, No. WIPO Case No. D2005-0444 (ordering transfer) (<espnnews.com> held to be confusingly similar to complainant’s ESPNEWS mark).

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark. Generally, a user of a mark “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition 23:50 (4th ed. 1998).

In via of the above discussion, the Panel finds that the Disputed Domain Names are confusingly similar to the DEERE and JOHN DEERE Marks pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest.

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Names. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

As set forth above, Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Names.

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or legitimate interests in the Domain Name:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 trademark or service mark at issue.

Complainant has sustained its burden of coming forward with a prima facie showing that Respondent lacks rights to or legitimate interests in the Disputed Domain Names. Respondent has chosen not to counter these allegations. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product.

Complainant alleges that it is inconceivable that XC2 innocently registered the Disputed Domain Names without having a design to exploit their similarity to Complainant’s Marks. Complainant further contends that XC2 indisputable registered and commenced use of the Disputed Domain Names with knowledge of Complainant’s prior use of the DEERE and JOHN DEERE Marks in order to benefit from and capitalize upon the reputation and goodwill that had long been established by Complainant in the DEERE and JOHN DEERE Marks. Complainant alleges that Respondent’s purpose was to attract Internet users and then redirect them to advertising-driven websites, from which XC2 received a commission or referral fee. Respondent did not contest these allegations.

Based on the available evidence, the Panel finds that Complainant has shown sufficient facts to support a finding that Complainant has demonstrated the existence of the criteria in the Policy paragraph 4(b)(iv) and that Respondent registered and used the Disputed Domain Names in bad faith pursuant to the Policy paragraph 4(a)(iii).

Complainant has further alleged that the use of a privacy service is in violation of the Registrant’s Contract with the Registrar as required by the Registrar Accreditation Agreement and constitutes further evidence of bad faith. In addition, Complainant cites the provision of misleading information to the WHOIS information database as further evidence of bad faith. The Panel finds that such evidence may be probative of bad faith, but makes its ruling based upon the violation of paragraph 4(b)(iv) of the Policy.

 

7. Decision

The Panel concludes (a) that the Disputed Domain Names <deeere.com>, <deeree.com>, <deereandco.com>, <johndeerelandscape.com> are confusingly similar to Complainant’s DEERE and JOHN DEERE Marks, (b) that Respondent has no rights or legitimate interest in the Disputed Domain Names and (c) that Respondent registered and used the Disputed Domain Names in bad faith.

Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names, <deeere.com>, <deeree.com>, <deereandco.com>, and <johndeerelandscape.com>, be transferred to Complainant.


Richard W. Page
Sole Panelist

Dated: February 19, 2008