WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tractor Supply Co. of Texas LP and Tractor Supply Company v. Moniker Privacy Services / Janice Liburd
Case No. D2010-0976
1. The Parties
The Complainants are Tractor Supply Co. of Texas LP,and Tractor Supply Company of United States of America, represented by Waller Lansden Dortch & Davis, LLP, United States of America.
The Respondent is Moniker Privacy Services of United States of America,/ Janice Liburd of Panama.
2. The Domain Name and Registrar
The disputed domain name <tractorsupplucompany.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 June 15, 2010, naming Moniker Privacy Services as the Respondent. On June 15, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On June 16, 2010, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named respondent and contact information in the Complaint. The Complainant filed a Request to Amend Complaint on June 23, 2010 requesting to add to the Complaint the name and contact details disclosed by the Registrar.
The Center verified that the Complaint together with the Request to Amend 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 July 1, 2010. On July 2, 2010 a short email message was received from the Respondent. On July 2, 2010 the Complainants requested a stay of proceedings, with the consent of the Respondent, to pursue settlement negotiations. The Center issued a Notification of Suspension of Administrative Proceeding on July 6, 2010 suspending this proceeding until August 5, 2010. The Complainants requested the reinstatement of the proceedings on July 27, 2010. On July 30, 2010 the Center advised the Parties of the reinstatement of the proceeding. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2010.
The Complainants submitted a Supplement to Complaint on August 5, 2010.
The Center appointed David J.A. Cairns as the sole panelist in this matter on August 20, 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.
4. Factual Background
The Complainants operate a chain of retail stores that are engaged in the business of the sale of retail farm and ranch products, including equine, pet and small animal products, hardware and seasonal products (including lawn and garden power equipment), truck, towing and tool products, work clothing, maintenance products, and home décor. Their business dates back to 1938.
The Complainants are the owner and licensee respectively of the following trademark registrations: (i) United States trademark registration No. 3039473 for TRACTOR SUPPLY CO.; (ii) United States trademark registration No. 18460154 for the word and design mark TSC TRACTOR SUPPLY CO.
The Complainants also allege that they have common law trademark rights in TRACTOR SUPPLY as a result of consumer goodwill acquired by virtue of more than 70 years of widespread use.
The Complainants have a website located at “www.tractorsupply.com” which they have used since at least May 8, 1999. They also own various other domain names including <tractorsupplycompany.com> (first use January 2007, and which redirects to the “www.tractorsupply.com” website). On the home page at their website the trademark TRACTOR SUPPLY CO. appears on the top left hand side of the page. The link to the Company Profile produces the following description:
“Tractor Supply Company is the largest retail farm and ranch store chain in the United States. The company operates more than 900 retail stores in 44 states, employs more than 13,000 team members and is headquartered in Brentwood, Tenn. Its stock is traded on the NASDAQ exchange under the symbol “TSCO.”
The company was founded in 1938 as a mail order catalog business offering tractor parts to America’s family farmers. Today Tractor Supply is a leading edge retailer with revenues surpassing $3 billion.”
The disputed domain name was registered on May 2, 2010. The registrant and contacted details changed on July 7, 2010, after the proceeding had commenced. The Panel entered the disputed domain name (from Spain) on August 26, 2010. The disputed domain name hosted a page of sponsored links.
5. Parties’ Contentions
The Complainants state that 70 years after the Complainants first began using their trademarks and nearly 11 years after the Complainants began using their “www.tractorsupply.com” website, the Respondent, without the permission of the Complainants, registered the disputed domain name.
The Complainants say that the disputed domain name is confusingly similar to the Complainants’ trademarks and the Complainants’ domain names. The Complainants state that UDRP Panels have consistently held that “common law” trademark rights are appropriate for protection under the Policy once the complainant establishes “that it has done business using the name in question in a sufficient manner to cause a secondary meaning identifiable to the complainant’s goods and services”.
The Complainants state that the use of the term “Tractor Supplu Company” in the disputed domain name is confusingly similar to Complainants’ domain names and the TRACTOR SUPPLY marks because it is identical to the TRACTOR SUPPLY trademarks, but for the Respondent’s substitution of the letter “u” for the letter “y.” Minor alterations such as this do not negate the confusingly similar aspects of the disputed domain name in relation to the Complainants’ TRACTOR SUPPLY trademarks, as contemplated by Paragraph 4(a)(i) of the Policy. The Complainants further state that the Respondent’s use of the disputed domain name is intentionally designed to cause deception, mistake and confusion amongst the consumers seeking information with regard to the services of the Complainants. It states that the slight difference between the disputed domain name and the Complainants’ trademarks is immaterial. The Complainants further allege that the Respondent registered the disputed domain name in order to engage in typosquatting, referring to various UDRP Panel decisions.
The Complainants state that the Respondent has no rights or legitimate interest in the disputed domain name. They state that the Complainants have never granted the Respondent rights to use the TRACTOR SUPPLY trademarks. The Respondent has never used a disputed domain name in connection with a bona fide offering of goods or services, nor demonstrated preparations to do so. Further, the disputed domain name is not being used for a non-commercial or fair use purpose. Furthermore, to the Complainants’ knowledge, the Respondent has never demonstrated preparations to use a disputed domain name in connections with a bona fide offering of goods or services. Rather, the Respondent has used and is currently using the disputed domain name to generate revenue from traffic diverted from Complainants’ “www.tractorsupply.com domain”. The Complainants state that the Respondent is simply using the disputed domain name to attract confused customers to the Respondent, diverting those customers to third party websites. Specifically, the Complainants state that the Respondent is using or has authorized the use of the disputed domain name to participate in a revenue generating programme whereby Respondent redirects Internet users to other commercial websites for profit.
Additionally, there is no evidence that the disputed domain name is the actual legal name of the Respondent or that it is commonly used to identify the Respondent. Moreover, the phrase “tractorsupplucompany”, has no value and would not be natural to choose for any kind of service offered via the Internet, were it not for Complainants’ domain name and longstanding trademark rights. Rather, due to the Complainants’ federal trademark registrations and widespread use of the TRACTOR SUPPLY trademarks, it is highly unlikely that Respondent was unaware of Complainants’ rights in the TRACTOR SUPPLY trademarks at the time of registration.
The Complainants also state that the disputed domain name was registered and is being used in bad faith. Specifically, the Complainants allege that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainants or to a competitor of Complainants, for valuable consideration in excess of its documented out-of-pocket costs. Given the similarity of the disputed domain name to the Complainants’ <tractorsupply.com>, <tractorsupplycompany.com> and <tractorsupplyco.com> domain names it is inconceivable that the Respondent was not aware of the Complainants’ rights at the time of the registration of the domain name. Furthermore, given the considerable presence of Complainants in the retail industry, it is evident that Respondent also registered and is holding the disputed domain name to prevent Complainants from registering it and seeks to benefit from those customers searching for Complainants’ website.
The Complainants also state that by replacing the letter “y” of the Complainants’ domain names with the letter “u,” which is located adjacent to “y” on the standard computer keyboard, the Respondent clearly aims to target computer users making typographical errors. By registering the disputed domain name that anticipates typographical errors of Internet users, the Respondent intends to divert users attempting to access the Complainants’ website in order to offer them the goods and services of third parties. This is a practice known as typosquatting, and “typosquatting is virtually per se registration and use in bad faith.” (citing Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568 and also Classmates Online, Inc. v. John Zuccarini, WIPO Case No. D2002-0635).
Finally, the Complainants refer to the repeated findings of bad faith against the Respondent’s identity shield service, and state that it is impossible to conceive of any plausible actual or contemplated use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of Complainants’ rights under trademark law, referring to the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In the Supplement to the Complaint the Complainants made further allegations on bad faith based on the provision of false contact information and the Respondent’s involvement in other UDRP proceedings.
The Complainants request a decision that the disputed domain name be transferred to the Complainants.
On July 2, 2010 the following message was received from the Respondent’s email address:
I am willing to give the name to you. Problem is it is a new registration so I cannot transfer for 60 days as it was newly registered. Do you have the Moniker.com account? If yes, I can push the domain to you.
Otherwise, the Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
Paragraph 4(a) of the Policy requires the Complainants to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.
Before turning to the merits, the Panel addresses two procedural matters. Firstly, in its request to reinstate the proceedings, the Complainants noted that the registration details of the Respondent had changed, and requested that the newly listed registrant be added as a further respondent in this proceeding. The Center did not add the new registrant name, nor include the new contact details in subsequent communications. The Registrar did not change, only the registrant details. The WhoIs information from the Registrar (provided by the Complainants with the request to reinstate the proceedings) shows the status of the disputed domain name as “Client Transfer Prohibited” and that the registration was created on May 2, 2010 and updated on July 7, 2010. Pursuant to paragraph 8(a) of the Policy transfers of a domain name to a new holder are not permitted during a pending administrative proceeding, and pursuant to Paragraph 3(a) of the Policy the Registrar does not have authority to make a transfer at the request of the Respondent in breach of paragraph 8. The WhoIs information confirms that there has not been any transfer in breach of the Policy, but rather a change in the Respondent’s description and contact details on July 7, 2010. Therefore, the Respondent has not changed, subsequent communications to the Respondent’s email address at the time of the notification of the Complaint are valid, and the Panel is satisfied that the Respondent has been fully informed of this proceeding and has had a fair opportunity to present its case. Moreover, on September 9, 2010 the Registrar confirmed to the Center that the WhoIs information for the disputed domain name had been changed due to an ‘internal error’ that had been corrected. The Registrar confirmed that the disputed domain name was locked and the correct information restored.
Secondly, there is the issue of the admissibility of the Complainant’s Supplement to Complaint of August 5, 2010. The Panel decides to admit this supplementary statement pursuant to paragraph 10(d) of the Rules, on the basis that it is a brief document (six paragraphs) and is confined to issues relating to the identity and contact information of the Respondent that had become apparent after the submission of the Complaint.
A. Identical or Confusingly Similar
The Panel accepts that the Complainants own the TRACTOR SUPPLY CO. and TSC TRACTOR SUPPLY CO. trademark registrations in the United States. The Complainants also use TRACTOR SUPPLY in a trademark sense as a shortened form of their full business name. The Panel accepts that the long and extensive business of the Complainants in the United States, the natural and convenient practice of dropping the corporate designation (in this case “Co.”) when referring to a business, the evidence that the Complainants refer to themselves as “Tractor Supply”, and the use of “tractor supply” for the Complainants’ own on-line presence (in the domain name <tractorsupply.com>) means that this expression has acquired consumer recognition and secondary meaning in the United States as referring to the Complainants’ business. In other words, TRACTOR SUPPLY is an unregistered or common law trademark in the United States. Unregistered trademark rights can support a claim under the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions paragraph 1.7).
The disputed domain name is not identical with the TRACTOR SUPPLY CO. registered trademark, or with the TRACTOR SUPPLY unregistered trademark, so the Panel turns to consider confusing similarity.
The similarity of the trademark and the domain name depends on many factors, including “the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin” (See Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870). The Panel will begin by considering the similarity of the disputed domain name with the TRACTOR SUPPLY CO. registered trademark.
The disputed domain name differs from the TRACTOR SUPPLY CO. trademark in that the word ‘supplu’ appears instead of “supply”, and the word “company” appears in place of the abbreviation “Co.”. The spaces between words in the registered trademark are disregarded for the purposes of this comparison.
The differences between the disputed domain name and the TRACTOR SUPPLY CO. trademark are of no significance for the purposes of the first element of the Policy in that: (i) the substitution of the letter “u” for “y” does not create any new word, or give the disputed domain name a distinctive meaning; (ii) the word “company” is the full form of the abbreviation “Co.” and so also does not create any new meaning or distinctiveness; (iii) the overall appearance of the disputed domain name immediately suggests the name ”tractor supply company”, and therefore the Complainants’ business and trademarks.
Additionally the disputed domain name is likely to confuse Internet users because of the recognition and secondary meaning of the TRACTOR SUPPLY CO. and TRACTOR SUPPLY trademarks based on their long and widespread use.
For these reasons the Panel finds that the disputed domain name is confusing similar to the Complainants’ trademarks and the first element of the Policy is accordingly satisfied.
B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent owns or has contractual rights in any registration of an TRACTOR SUPPLU COMPANY or a TRACTOR SUPPLU trademark; (ii) the Respondent is not authorized or licensed by the Complainants to use their trademarks or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name; and (iv) the Respondent is using the disputed domain name for commercial gain through sponsored links on the landing page.
Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. There is no evidence before the Panel of the existence of any of these circumstances in the present case. In relation to paragraph 4(c)(i) and (iii) the Panel finds that the Respondent’s use of the disputed domain name is for commercial gain through sponsored links, and also that a use of the disputed domain name to attract Internet traffic to a website based on confusion, inadvertence or error (through the misspelling of the address of one of the Complainants’ own domain names by Internet users) is not a use in connection with a bona fide offering of goods or services.
Further, the Respondent’s July 2, 2010 message did not assert any rights or legitimate interests in the disputed domain name. To the contrary, by offering to give the disputed domain name to the Complainants the Respondent implicitly acknowledged its lack of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.
In particular, paragraph 4(b)(iv) states that if the Panel finds that the Respondent has used the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation or endorsement of its website, it should be taken as evidence of the registration and use of the domain name in bad faith.
The Panel finds that the evidence submitted by the Complainants supports a finding of bad faith under paragraph 4(b)(iv). The Respondent’s use of the disputed domain name with the intention to attract Internet users for commercial gain is established by the sponsored links on its website. The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain name is confusingly similar to the TRACTOR SUPPLY CO. and TRACTOR SUPPLY trademarks and the Complainants’ domain names.
The Panel is satisfied that the Respondent deliberately chose the disputed domain name to take advantage of the Complainants’ goodwill. This is a clear case of typosquatting in that the disputed domain name differs from one of the Complainants’ domain names in only one letter (the substitution of the letter “u” for “y”) which are side by side on a keyboard. The Panel finds that the Respondent knew of the Complainants’ business and trademarks at the time of registration, and registered the disputed domain name with the intention of attracting Internet traffic (and ‘click-through’ revenue) based on a typing error. Typosquatting, in itself, constitutes registration and use in bad faith (see National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011; “Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith”).
Finally, the Respondent on July 2, 2010 offered to give the domain name to the Complainants, and the proceeding was suspended for this purpose. The Respondent did not transfer the disputed domain name, and on July 7, 2010 appears to have changed the registration and contact details for the disputed domain name. The Panel concludes that the Respondent’s intended to delay or complicate this proceeding and this is corroborative evidence of bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
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, <tractorsupplucompany.com> be transferred to the Complainants.
David J.A. Cairns
Dated: September 3, 2010