Complainant is Ariens Company of Brillion, Wisconsin, United States of America, represented by Quarles & Brady LLP, United States (hereinafter “Complainant”).
Respondents are Domains by Proxy, Inc. of Scottsdale, Arizona, United States and Jeff Mathis / C&M Golf of Waco, Texas, United States (hereinafter referred to, jointly and severally, as “Respondent”).
The disputed domain name <gravelyturf.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2009. On May 11, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 11, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 18, 2009, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed a First Amended Complaint on May 22, 2009 (hereinafter, the “Complaint”). The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 May 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 18, 2009.
The Center appointed M. Scott Donahey as the sole panelist in this matter on June 24, 2009. 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.
Complainant is the registered owner of three trademarks issued by the United States Patent and Trademark Office (“USPTO”), the earliest of which issued on October 22, 1963.1 Complaint Annex 3. The trademarks are in connection with lawn mowers, tractors, turf vacuums, and similar lawn and turf related equipment. On September 10, 1995, Complainant registered the domain name <gravely.com>, which Complainant uses to resolve to a web site on which it offers for sale its lawn and turf equipment. Complaint Annex 4.
In the last five years Complainant has sold more than USD 450 million in North America alone and in that same time period and region has expended more than USD 15 million in the promotion of its trademarked goods.
Complainant has not authorized Respondent to use its trademark in any way, nor does the domain name at issue correspond to the business or trade name of Respondent.
Respondent registered the domain name at issue on January 10, 2009. Complaint Annex 1. Respondent uses the domain name at issue to resolve to a web site at which there are sponsored links many of which to companies which sell lawn and turf equipment directly competitive with that offered by Complainant. Complaint Annex 5.
Complainant contends that the domain name at issue is confusingly similar to trademarks in which Complainant has rights that Respondent has no rights or legitimate interests in respect of such domain name, and that Respondent has registered and is using the domain name at issue in bad faith.
Respondent did not reply to the Complainant's contentions.
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.”
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 legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
The domain name at issue consists of the Complainant's long-standing trademark and the addition of the common word “turf.” Complainant's products are used in conjunction with the care and maintenance of lawn and turf. Where a term is added to a trademark in a domain name, which term is related to the goods or services in connection with which the mark is used, the domain name is confusingly similar to the trademark. EAuto L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 (concerning the domain name <eautoparts.com>).
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
The domain name at issue resolves to a parking site which according to the statements on the web site was established by the Registrar. The parking site contains links to companies who sell goods directly competitive with the trademarked goods of Complainant. Whether it is Respondent who profits from the revenues derived from the parking site, the Registrar, or, as is most likely, a combination of the two, it does not matter. This misuse of the domain name at issue constitutes a violation of paragraph 4(b)(iv) of the Policy and bad faith registration and use. Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.
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, <gravelyturf.com>, be transferred to the Complainant.
M. Scott Donahey
Dated: June 30, 2009
1 The document submitted by Complainant shows the owner of the earliest registered mark to be the Studebaker Corporation. However, a visit to the USPTP web site shows a chain of assignments, the latest of which shows ownership in Complainant, subject to certain security interests.