The Complainant is Terex Corporation of Westport, Connecticut, United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is Peter McIntyre, Cashmere Holdings Pty Ltd of Landsborough, Queensland, Australia.
The disputed domain name <posi-track.com.au> is registered with NetRegistryPty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2010. On March 8, 2010, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the disputed domain name. On March 8, 2010, NetRegistryPty Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 March 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2010. The Respondent sent informal email communications to the Center on April 6, 2010. However, no formal Response was submitted.
The Center appointed Michael J. Spence as the sole panelist in this matter on April 16, 2010. 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.
The Complainant is the world's third largest manufacturer of construction and mining equipment. Since 2001, it has been selling rubber track loaders in Australia under the trade mark POSI-TRACK. The Complainant has a 53 per cent share of the relevant market, in which they have used the POSI-TRACK trade mark very widely. The Respondent registered the disputed domain name on his own behalf in March 2008 while employed by an authorized dealer of POSI-TRACK equipment. He left that employment in January 2009. The site operating under the disputed domain name includes “detailed information about Complainant's products sold under the POSI-TRACK Trademark and includes photos, text and images created (and owned) by Complainant itself.” It also provides a facility for the Respondent to collect information about prospective customers of the Complainant's products. The Complainant has repeatedly demanded that the Respondent cease using the disputed domain name. The Respondent has refused, but has offered to sell the disputed domain name to the Complainant.
The Complainant contends that: (i) the disputed domain name contains the whole of its POSI-TRACK trade mark in identical form; (ii) the Respondent has no rights or legitimate interest in the disputed domain name and, in particular, that the Respondent is neither an authorized dealer in the Complainant's product, nor operating a legitimate resale site in a context in which the Respondent's relationship with the Complainant is made clear; and (iii) the strength of the likelihood of confusion in this case makes it probable that the Respondent is seeking to obtain commercial benefit by confusing potential customers of the Complainant, and therefore registered, and is using, the disputed domain name in bad faith.
The Respondent did not submit a response, though he did communicate with the Center informally, indicating that he had offered to sell the disputed domain name to the Complainant.
The disputed domain name contains the whole of the Complainant's trade mark in identical form.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed names (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
It is difficult to conceive of any rights or legitimate interests that the Respondent might have in the disputed domain name, given several features of this case emphasized by the Complainant. These include: that the disputed domain name is identical with the Complainant's trade mark; the strength of the Complainant's mark and therefore the improbability that the Respondent had been independently operating under the same mark; that the site operating under the disputed domain name contains detailed information about the Complainant's products and, indeed, material owned by the Complainant itself, rendering the likelihood of confusion extremely strong; that the Respondent himself has never been an authorized dealer of the Complainant's products, though he has been employed by one; that the site operating under the disputed domain name does not make clear the relationship (or lack thereof) between the Complainant and the Respondent.
The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the Policy.
The Complainant contends that this is a case in which the strength of the likelihood of confusion and the clear lack of any right or legitimate interest on the part of the Respondent makes it “likely that the Respondent knew of the Complainant's mark, and has sought to obtain a commercial benefit by attracting Internet users based on that confusion.” Western Union Holdings, Inc. v. Manuel Rodriguez, WIPO Case No. D2006-0850. Knowingly obtaining a commercial benefit from consumer confusion in this way is a well established example of bad faith. In addition, the Respondent's own admission is that he sought to sell the disputed domain name to the Complainant, thereby indicating an intention to profit from the confusing registration. This appears to constitute a well-established category of bad faith.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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 <posi-track.com.au> be transferred to the Complainant.
Michael J. Spence
Dated: May 9, 2010