WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tractor Supply Company v. WhoisGuard Protected, WhoisGuard, Inc. / Party Brands LLC
Case No. D2017-0325
1. The Parties
Complainant is Tractor Supply Company of Brentwood, Tennessee, United States of America ("U.S."), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland .
Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Party Brands LLC, of Walnut, California, U.S.
2. The Domain Name and Registrar
The disputed domain name <tractorsupply.store> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 17, 2017. On February 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2017, the Registrar 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 Complainant on February 22, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 24, 2017.
The Center verified that the Complaint, together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 22, 2017.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on April 4, 2017. 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
Complainant Tractor Supply Company, which began operations in 1938, operates over 1,600 retail stores throughout most of the U.S. and employs over 24,000 team members. Complainant's stores focus on supplying the lifestyle needs of recreational farmers and ranchers and others who enjoy the rural lifestyle, as well as tradesmen and small businesses. Complainant's stores offer a variety of products, including welders, generators, animal feed, power tools, riding mowers, and lawn and garden products.
Complainant owns U.S. Trademark Registration No. 4,612,493 for the mark TSC TRACTOR SUPPLY CO. (registered on September 30, 2014), as well as a host of domain names that incorporate the term "tractor supply", including <tractorsupply.com> and <tractor-supply-world.com>.
The disputed domain name, <tractorsupply.store>, resolves to a pay-per-click (PPC) site with links to third‑party websites, some of which offer goods and/or services in direct competition with those offered by Complainant. It was registered on June 14, 2016.
Complainant's counsel sent a "cease and desist" letter to Respondent on October 10, 2016, with a follow-up email on October 18, 2016. Respondent did not respond to either communication.
5. Parties' Contentions
Complainant contends that the disputed domain name is confusingly similar to the TSC TRACTOR SUPPLY CO. trademark. It emphasizes that the disputed domain name incorporates the distinctive element of the mark – the phrase "tractor supply" – and that the addition of the generic Top-Level Domain ("gTLD") ".store" creates an association with the way in which Complainant sells its products to the general public, i.e., from their large stores. In addition to its U.S. trademark registration for TSC TRACTOR SUPPLY CO., Complainant contends that it has acquired common law rights in its mark as a result of 75 years of widespread use.
Complainant further argues that Respondent has no rights or legitimate interests in the <tractorsupply.store> disputed domain name. It maintains that Respondent's use of the disputed domain name in connection with PPC links takes unfair advantage of Complainant's rights and, thus, the disputed domain name is not being used in connection with a bona fide offering of goods and services. Complainant points out that some of the links on the landing page feature the term "tractor supply" and the letters "TSC" and that many of the links direct users to other tractor and/or farm supply services which offer products that compete with those offered by Complainant.
Complainant also indicates that there is no evidence that Respondent is commonly known as "tractor supply" or that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
With respect to the issue of "bad faith" registration and use, Complainant submits that Respondent had both actual and constructive knowledge of the TSC TRACTOR SUPPLY CO. mark at the time of registration of the disputed domain name and that Respondent has used the "tractor supply" term in its domain name in order to profit from unsuspecting Internet users who use the disputed domain name with the intention of finding Complainant's official products from <tractorsupply.com>. Complainant also points to the use of the gTLD ".store" in the disputed domain name as evidence of the requisite bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the TSC TRACTOR SUPPLY CO. mark. In addition to the fact that such mark is the subject of a U.S. trademark registration, the evidence also supports a determination that Complainant, through its longstanding use of the mark, possesses common law rights in it.
The Panel finds that the disputed domain name, <tractorsupply.store>, is confusingly similar to the TSC TRACTOR SUPPLY CO. trademark. As noted by Complainant, the disputed domain name incorporates in full the most distinctive element of the mark. The addition of the gTLD ".store" does not support a contrary determination; indeed, as argued by Complainant, the addition of such term may be considered as an aggravating factor insofar as Complainant offers its TSC TRACTOR SUPPLY CO. goods and services at its retail store locations located throughout the U.S. In any event, the gTLD, being a technical requirement of registration, is typically disregarded for the purposes of comparison under the first element.
B. Rights or Legitimate Interests
The Panel concludes that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. The evidence indicates that the disputed domain name resolves to a landing page with PPC links to third-party sites that feature aspects of Complainant's mark and that offer products and/or services that compete with those provided by Complainant. Thus, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. There also is no evidence that Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that Respondent is commonly known by the disputed domain name.
C. Registered and Used in Bad Faith
The Panel holds that the disputed domain name was registered and is being used in bad faith. The evidence indicates that Respondent, by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of such site or locations or of the products or services on the site or location, within the meaning of paragraph 4(b)(iv) of the Policy. Respondent, presumably, earns revenue from the PPC sites; as determined above, the disputed domain name is confusingly similar to Complainant's mark; and some of the goods and services offered on the third-party sites compete with those offered by Complainant. It is also reasonable to assume, given Complainant's longstanding and widespread use of the TSC TRACTOR SUPPLY CO. mark prior to the registration of the disputed domain name, that Respondent had actual knowledge of Complainant and of its mark at the time of the disputed domain name's registration. Respondent's failure to respond to the "cease and desist" letter and email is an additional factor in support of a finding of 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 disputed domain name <tractorsupply.store> be transferred to Complainant.
Jeffrey M. Samuels
Date: April 18, 2017