WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tractor Supply Co. of Texas, LP and Tractor Supply Company v. Contact Id 9668727, Host Master, Transure Enterprise Ltd / Above.com Pty. Ltd. Domain Privacy

Case No. D2011-0737

1. The Parties

The Complainants are Tractor Supply Co. of Texas, LP and Tractor Supply Company both of Nashville, Tennessee, United States of America, represented by Waller Lansden Dortch & Davis, LLP, United States of America.

The Respondent is Contact Id 9668727, Host Master, Transure Enterprise Ltd. of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland and Above.com Pty. Ltd. Domain Privacy of Victoria, Australia.

2. The Domain Name and Registrar

The disputed domain name <tracktorsupplie.com> is registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2011. On April 28, 2011, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 29, 2011, Above.com, Inc. 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 Center sent an email communication to the Complainant on April 29, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 29, 2011.

The Center verified that the Complaint together with the amendment to 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 26, 2011.

The Center appointed Desmond J. Ryan as the sole panelist in this matter on June 8, 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

The disputed domain name was registered on March 23, 2011.

The Complainants, by themselves and their predecessors have traded in the United States of America since 1938 under the name and trademark Tractor Supply Company. The Complainants operate online through their website at “www.tractorsupply.com” and through 1,001 stores in 44 states throughout the United States of America. The Complainants own and operate the following further domain names:

<tractorsupply.org>, <tractorsupplyco.com> and <tractorsupplycompany.com>.

Their net sales for 2010 were in excess of 3.6 billion dollars and their advertising expenditure for that year was 58 million dollars. The Complainants have US trademark registrations for the trademarks TRACTOR SUPPLY CO and TSC TRACTOR SUPPLY CO claiming use in commerce since 1938. The registrations cover retail stores and retail store services in relation to a wide range of retail hardware and gardening supplies and equipment.

No information is available about the Respondents save that the true owner of the domain name appears to be Transure Enterprise Ltd which operates behind the privacy shield afforded by Above.com Pty Ltd.

5. Parties’ Contentions

A. Complainant

The Complainants contend that they have strong and well established rights in the trademark TRACTOR SUPPLY by virtue of their registrations on the Principal Register at the US Trademark Office and, at common law, by virtue of their long and extensive use. They further submit that the majority of the goods in which they trade are not connected with tractors and the trademark TRACTOR SUPPLY and the domain name <tractorsupply.com> are inherently distinctive in respect of such goods.

The Complainants contend that the disputed domain name is confusingly similar to their TRACTOR SUPPLY trademarks as it is phonetically equivalent to the trademark and differs therefrom only by the addition of the letter "K" and the substitution of the letters "IE"" for the letter "Y". The Complainants cite in support of their contention the decision in DaimlerChrysler Corp v Worshiping, Chrisler, and Chraka Dream Media and aka Peter Conover, WIPO Case No. D2000-1272 and Go Daddy Software, Inc v Daniel Hadani, WIPO Case No. D2002-0568.

The Complainants further contend that the Respondents have no rights or legitimate interests in the disputed domain name as they have not been authorized to use the domain name by the Complainants, are not commonly known by the domain name and their commercial use of the domain name to direct to third party website on a pay-per-click basis is not a bona fide offering of goods or services by reference to the disputed domain name. They submit, citing Pierce Brosnan v Network Operations Ctr., WIPO Case No. D2003-0519 that the Respondents use of the disputed domain name to attract confused customers of the Complainants and divert them to third party websites is not a legitimate use of the domain name.

The Complainants contend that given their considerable presence in the retail industry it is almost inconceivable that the Respondents were not aware of the Complainants' rights at the time of registering the disputed domain name and it is therefore reasonable to infer that a primary purpose of the registration was to sell it for a profit, to prevent the Complainants from registering it and to benefit from confusion created among persons searching for the Complainants' website. The Complainants submit that the Respondents clearly aim to target Internet users making typographical errors and are engaged in typosquatting. They submit that "typosquatting is virtually per se registration and use in bad faith" see Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568 and "Typosquatting is presumptive – well nigh conclusive – evidence of registration and use in bad faith" – see Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635.

The Complainants cite five previous UDRP decisions in which the respondents have been held to have acted in bad faith and submit that such repeated findings of bad faith are indicative of continued bad faith motives. (The Panel notes that each of the Respondents has been the subject of adverse decisions in over forty (40) cases under the UDRP).

B. Respondent

The Respondents did not reply to the Complainants’ contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainants are the owners of trademarks in the Principal Register at the US Trademarks Office consisting of, or including the trademark TRACTOR SUPPLY. They have also demonstrated long and extensive use of the trademark from which strong common law rights can be implied. The disputed domain name takes the trademark in its entirety save for two spelling errors. The trademarks and the operative part of the disputed domain name are phonetically identical and are so similar in appearance as to be nearly identical. The substitution of the letters "CK" for the single letter "K" in the word tractor and the letters "IE" for the letter "Y" in the word supply are substitutions which commonly occur as spelling errors. They are not therefore, either visually or aurally sufficient to distinguish the disputed domain name from the Complainants' trademark.

The Panel therefore finds that the disputed domain name is confusingly similar to the trademark TRACTOR SUPPLY in which the Complainants, and each of them, have rights.

B. Rights or Legitimate Interests

The Complainants have demonstrated long, widespread and substantial use of their TRACTOR SUPPLY trademark. Whilst the Respondents respectively appear to be domiciled in the British Virgin Islands and in Australia and there is no direct evidence that the Complainants have operated in either of those territories there is no apparent reason why the Respondents would register a domain name so closely resembling the Complainants trademark other than for the purpose of attracting Internet users to their website as a result of confusion with the Complainants' well-known trademarks, or with the Complainants' domain names which incorporate that trademark. Neither of the elements specified in paragraph 4(c)(ii) and (iii) of the Policy are applicable and the Complainants have made a prima facie showing that the Respondents' registration of the disputed domain name was made in bad faith so that its use to direct to a page offering links to third party websites cannot constitute a use in the bona fide offering of goods and services. It has long been accepted by panelists administering the Policy that such use is not bona fide and as the Complainants have pointed out, citing the Go Daddy Software and Classmates Online cases referred to above, typosquatting is a strong indicator of bad faith. In a case recently decided, involving the present parties and substantially similar circumstances, Tractor Supply Co. of Texas, LP, and Tractor Supply Company v. Above.com Domain Privacy /Transure Enterprise Ltd., WIPO Case No. D2011-0487, the panel said:

"In the view of this Panel by choosing to replace the letter "a" with the letter "e" the Respondent has demonstrated that it intended to attract Internet users who misspelled the words. This is indicative of an intention to engage in typosquatting as alleged by the Complainants. While using a proxy or privacy services does not in itself indicate bad faith registration of a domain name, in the present proceeding it adds to the weight of evidence against the Respondent."

The Respondents have had every opportunity to respond to the allegations of bad faith and lack of rights or legitimate interest raised in the Complaint. They have failed to do so and there is a reasonable assumption that such failure indicates a lack of basis upon which the allegations could be denied (see Jones v Dunkel [1959] HCA 8).

The Panel therefore finds that the Respondents have no rights or legitimate interest in the domain name.

C. Registered and Used in Bad Faith

For the reasons already discussed in Section 6B above the Panel concludes that there is a strong probability that the Respondents were aware of the reputation of the Complainants TRACTOR SUPPLY trademark and, by registering the domain name and using it to direct to a portal site from which revenue is derived they intentionally attempted to attract Internet users to their website for commercial gain by creating a likelihood of confusion with the Complainants' mark. The many cases referred to above in which these Respondents have been found to have acted in bad faith and their failure to rebut the Complainants' allegations further supports a finding of bad faith.

The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

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 <tracktorsupplie.com> be transferred to the Complainants.

Desmond J. Ryan AM
Sole Panelist
Dated: June 21, 2011