WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tractor Supply Co. of Texas, LP, Tractor Supply Company v. Above.com PTY. LTD, Domain Privacy
Case No. D2011-0728
1. The Parties
The Complainant is Tractor Supply Co. of Texas, LP of Texas, United States of America, and Tractor Supply Company of Delaware, United States of America, represented by Waller Lansden Dortch & Davis, LLP, United States of America.
The Respondent is Above.com PTY. LTD, Domain Privacy of Beaumaris, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <tractorsupplycopany.com> is registered with Key-Systems GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2011. On April 27, 2011, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the disputed domain name. On April 27, 2011, Key-Systems GmbH dba domaindiscount24.com 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 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 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2011.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on May 27, 2011. 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
According to the evidence contained in the Complaint, since as early as 1938, the Complainant, or its predecessors-in-interest, have operated a retail business under the mark TRACTOR SUPPLY COMPANY. The Complainant’s operations began when Charles E. Schmidt, Jr. of Chicago, Illinois, established a small mail order parts business. By 1939, this business had grown into a successful retail store in Minot, North Dakota. Today Tractor Supply Company is a well-known publicly traded company with annual net sales over USD 3.6 billion in 2010. Evidence of this is contained in the Complainant’s Annual Report for 2010 which is annexed at Annex D to the Complaint.
Over the years, as the Complainant grew, it adopted several variations of the service mark TRACTOR SUPPLY COMPANY including TRACTOR SUPPLY, TRACTOR SUPPLY CO and TSC (the “TRACTOR SUPPLY marks”). Today Tractor Supply Co. of Texas, LP owns the TRACTOR SUPPLY marks which it licenses to Tractor Supply Company.
Evidenced at Annex E to the Complaint is the history of Tractor Supply Company which illustrates the Complainant’s longstanding and widespread use of the TRACTOR SUPPLY marks in the course of its business. Included at Annex E is a company profile and a copy of the cover of “Work Hard, Have Fun, Make Money: The Tractor Supply Story”. This is a book written by Nelson Eddy about the journey of a “small replacement parts catalogue company that became the No. 1 Farm and Ranch Store chain in the world, a billion dollar business that Forbes magazine has ranked amongst the best managed companies in America”.
The Complainant submits that the TRACTOR SUPPLY marks are widely known to consumers to identify specifically Tractor Supply Co’s chain of retail store. The Complainant has acquired widespread consumer goodwill by virtue of more than 70 years of widespread use. The Complainant has invested substantial time, expense and effort in the creation of goodwill surrounding the TRACTOR SUPPLY marks and has acquired valid and far reaching common law trade mark rights. In 2010, for example, the Complainant spent USD 58 million in advertising its brand. With at least 1,001 stores in 44 states of the United States, the Complainant submits it is one of the largest retail store chains in the world and the leading farm and ranch brand in the United States.
The Complainant is the registered owner of a number of trade mark registrations including the following:
(1) United States Trade mark registration number 3039473 for TRACTOR SUPPLY CO.;
(2) United States Trade mark registration number 1846015 for TSC TRACTOR SUPPLY CO + device.
Copies of the registration certificates are annexed at Annexes F and G to the Complaint.
The Complainant also trades online through its website “www.tractorsupply.com”. The Complainant asserts that it has acquired far reaching common law trade mark rights in “www.tractorsupply.com” based upon its use of that domain name since at least as early as May 8, 1999. Exhibited at Annex H to the Complaint is a copy of contents of pages of the website “www.tractorsupply.com”, copies of the Archive.org report and a WhoIs search for <tractorsupply.com> additionally, the Complainant is also the registrant of the following domain names:
<tractorsupply.org>, <tractorsupplyco.com> and <tractorsupplycompany.com>.
On March 31, 2011, the Respondent registered the disputed domain name <www.tractorsupplycopany.com>. This is evidenced by the WhoIs report annexed at Annex A to the Complaint.
Complainant alleges that there is evidence that the Respondent is using the disputed domain name for commercial purposes including providing advertisement links from the disputed domain name to other websites. Screenshots of the Respondent’s websites are annexed at Annex L to the Complaint.
In the absence of any evidence to the contrary, the Panel accepts the truth of the evidence set out above and in particular the ownership by the Complainant of unregistered and registered trade mark rights in the TRACTOR SUPPLY marks.
5. Parties’ Contentions
The Complainant submits:
(1) The disputed domain name is confusingly similar to the Complainant’s marks and the Complainant’s domain name.
(2) The Respondent has no rights or legitimate interest in the disputed domain name. The Complainant has at no time granted the Respondent rights to use the TRACTOR SUPPLY marks, nor has the disputed domain name been used in connection with a bona fide offering of goods and services. There is no evidence that the disputed domain name is the actual trading name of the Respondent.
(3) The disputed domain name was registered and is being used in bad faith. The Complainant submits 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 Complainant or to a competitor. It submits that the deletion of the letter ‘m’ in the domain name from Tractor Supply Company aims to target computer users making typographical errors and constitutes typo-squatting. It submits that the Respondent registered and is holding the disputed domain name to prevent the Complainant from registering it and seeks to benefit for those customers searching for the Complainant’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel accepts the evidence that the Complainant owns trade mark rights in the TRACTOR SUPPLY marks. Evidence of this is set out in the Complaint.
The Complainant submits that the use of the term, “Tractor Supply Copany”, in the disputed domain name is confusingly similar to the Complainant’s marks save for the deletion of the letter ‘m’ from the word “Company”.
The Panel accepts this evidence and submissions and finds that the disputed domain name is confusingly similar to the Complainant’s marks.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent does not have any rights to use the TRACTOR SUPPLY marks. This is because there is no evidence that the Respondent has a bona fide entitlement to offer goods and services represented by the marks nor has it demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The Complainant submits that the Respondent is merely using the disputed domain name to attract confused customers of the Complainant and diverting those customers to third party websites. The Complainant points out that there is no evidence that the disputed domain name is the actual legal name of the Respondent or is commonly used to identify the Respondent without infringing the Complainant’s trade mark rights.
In the absence of any evidence to the contrary, the Panel accepts the force of these submissions and finds for the Complainant in respect of this element.
C. Registered and Used in Bad Faith
The Complainant relies upon paragraph 4(b) of the Policy which sets out four non-exclusive circumstances which, if found by the Panel, shall be evidence of bad faith. It makes the following submissions:
(i) It is inconceivable that the Respondent was not aware of the Complainant’s rights at the time it registered the disputed domain name. It is therefore reasonable to infer that a primary purpose of the registration of the disputed domain name was to re-sell it for a profit.
(ii) The Respondent registered and is holding the disputed domain name to prevent the Complainant from registering it and seeks to benefit from those customers searching for the Complainant’s website. Therefore, it is clear that the Respondent intended to target and disrupt the Complainant’s business.
(iii) By deleting the letter ‘m’ from the mark TRACTOR SUPPLY COMPANY, the Respondent clearly aims to target computer users making typographical errors and that this is an example of typo-squatting.
(iv) There is evidence of prior bad faith on the part of the Respondent as was shown in previous UDRP decision listed at Annex BB to the Complaint.
Looking at these submissions of bad faith as submitted by the Complainant and taking into account that the Panel must look at the “totality of circumstances” surrounding the registration of the disputed domain name in question, and in the absence of evidence to the contrary from the Respondent, the Panel finds that the disputed domain name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tractorsupplycopany.com> be transferred to the Complainant.
Clive Duncan Thorne
Dated: June 3, 2011