WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clark Equipment Company v. R & R Equipment Pty Ltd
Case No. DAU2012-0011
1. The Parties
The Complainant is Clark Equipment Company of West Fargo, North Dakota, United States of America (“U.S.”) represented by Watermark Intellectual Property Lawyers, Australia.
The Respondent is R & R Equipment Pty Ltd of Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <bobcatsales.com.au> is registered with PlanetDomain Pty Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2012. On April 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 2012, the Registrar 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” or “.auDRP”), 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 April 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2012.
The Center appointed Staniforth Ricketson as the sole panelist in this matter on May 21, 2012. 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 Complainant in this proceeding is a U.S. corporation which is a manufacturer of compact construction equipment and other machinery for sale. According to the Complainant, it does business as the “Bobcat Company”, “Bobcat” being the name given to its products, and it has a number of websites, including Internet websites including “www.bobcat.com” and “www.bobcat.com.au” that describe and promote its business and products, including a facility for customers to obtain price quotations.
It appears further from the Complaint that the Australian distributor of the Complainant’s products, Clark Equipment Australia Pty Ltd, is an Australian owned, BRW Top 500 Australian Private Company with over 20 branches and 500 employees across Australia and New Zealand and that it has been distributing equipment in the Australasian construction, infrastructure, agricultural, mining, materials handling and logistics sectors for over 60 years. In particular, this has been done under the mark BOBCAT, which is the subject of several Australian trade mark registrations. These products are also to be found at the Complainant’s Australian distributor website “www.clarkequipment.com/brands/bobcat”.
According to the whois.com.au database (Complaint, Annex A), the Respondent is the registrant of the disputed domain name, which was last modified on August 19, 2010. Although it is not stated in the Complaint when the Complainant became aware of the Respondent’s registration, in January 2012 the Complainant notified the Respondent of its concerns, seeking transfer to it of the disputed domain name on the basis of likely confusion with its registered BOBCAT trade marks. There was no response to this, or to a subsequent, communication to the Respondent (Complaint, Annexes C and D), and the Complainant then instituted the present administrative proceeding.
5. Parties’ Contentions
In keeping with the requirements of paragraph 4(a) of the .auDRP, the Complainant submits as follows.
First, so far as the requirement that it has rights in a “name, trademark or service mark” is concerned, it points to its three registered Australian trade marks, Nos. 198207, 707659 and 1139582 for the word BOBCAT. The earliest of these registrations is October 27, 1965, and is in respect of loaders and vehicles falling within class 12. The other marks are dated May 2, 1996 in respect of machines and implements falling within class 7 and October 5, 2006 in respect of construction, repair and installation services falling within class 37 (Complaint, Annex E). The Complainant then submits that the disputed domain name is confusingly similar to these trade marks, noting that the addition of the descriptive word “sales” does not reduce the risk of confusion between the disputed domain name and the Complainant’s trade marks. In this regard, the Complainant cites a number of prior UDRP decisions (some involving the Complainant) in which it has been held that the addition of a descriptive word to a well-known mark can still lead to confusing similarity (Complaint, Annexes F to H).
Secondly, the Complainant denies that the Respondent has any rights or legitimate interests in the disputed domain name and puts forward a number of arguments in support. Thus, it notes that the Respondent’s website advertises and offers for sale numerous goods and services from a number of different companies that are competitors of the Complainant, as well as the goods and services of the Complainant itself (Complaint, Annex J). However, the Respondent does not have any trade marks of its own that contain or include the word BOBCAT, and the Complainant has no information that the Respondent is known by that word as its trading or business name, rather than those of “Northern Rivers’ Equipment”, which is the name promoted on the website for New South Wales and “Skid Steer Sales” for Queensland. It argues further that the Respondent is not making bona fide offerings for resale of BOBCAT and other products, and that its activities are likely to mislead consumers into believing there is a connection between it and the Complainant. The Complainant also seeks to rebut a possible argument from the Respondent that the mark BOBCAT is now merely a descriptive or generic term for compact, rubber-tyred front-end, referring here to a prior UDRP decision in which such an argument was rejected (Clark Equipment Company v. AllJap Machinery Pty Ltd, WIPO Case No. DAU2011-0042, Complaint, Annex F), as well as a statement in the Australian Trade Marks Office Manual of Practice & Procedure Part 14, Annex A3 (Complaint, Annex N) and various dictionary definitions that indicate the continuing trade mark significance of the term BOBCAT (Complaint, Annexes N to Q).
Thirdly, the Complainant submits that the registration of the disputed domain name was made in bad faith and/or has been subsequently used in bad faith. There is some lack of clarity in the way that these submissions are framed, but essentially they seem to be based on the proposition that the use of the disputed domain name will lead online customers to believe that there is an association between the Complainant and the Respondent’s website. It is therefore submitted that the Respondent must have registered the disputed domain name with the intention of deriving a commercial benefit of some kind from this association, and that this is sufficient for the purposes of showing registration in bad faith. Alternatively, the Complainant submits that the Respondent’s continued use of the disputed domain name to resolve to a website offering for sale both genuine BOBCAT branded equipment and competitors’ brands is use in bad faith, which is in turn sufficient to satisfy this element under the Policy.
The Respondent did not make a Response to the Complaint.
6. Discussion and Findings
Paragraph 5(e) of the Rules provides that, where no response is submitted, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the Complaint. Such default on the part of the Respondent does not relieve the Complainant from being required to establish that each of the requirements of the .auDRP, in particular those under paragraph 4(a), is present. Additionally, paragraph 14(b) of the Rules provides that, “if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.”
Accordingly, the Panel proceeds to deal with each of the elements required to be satisfied under paragraph 4(a) of the auDRP, noting that it is necessary for the Complainant to satisfy each one if it is to succeed in achieving the relief requested.
A. Identical or Confusingly Similar
As noted above, paragraph 4(a)(i) requires that the Complainant establish that the disputed domain name is “identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights”. There are therefore two limbs of paragraph 4(a)(i) that the Complainant must satisfy: first, that it has “rights in a trade or service mark” (this need not be a registered mark), and, secondly, that the disputed domain name is “identical or confusingly similar” to that mark.
As to the first of these requirements, the Complainant has shown that it has rights in a number of registered Australian trade marks that consist solely of the word BOBCAT and which cover a wide range of goods and services falling within classes 7, 12 and 37. The oldest of these dates from 1965, with the others dating from 1996 and 2006 respectively, and they clearly predate the disputed domain name. It is likely that the BOBCAT mark would also meet the description of a well-known mark, but such an inquiry is unnecessary for present purposes,
As to the second of the requirements under paragraph 4(a)(i), there is no assertion by the Complainant that the disputed domain name is identical to its trade marks; rather, its argument is that there is confusing similarity. The Panel accepts this submission, in particular that such confusion is likely to arise because the disputed domain name begins with, and incorporates the whole of, the Complainant’s trade mark. This is the first thing that any customer will see when he or she encounters the disputed domain name. The Panel also accepts that the addition of the descriptive suffix “sales” does little, if anything, to dispel the likelihood of confusing similarity arising: if anything, it increases this possibility on the basis that a customer will be led to think that this is the Complainant’s mark coupled with a direct reference to goods or services that it sells. In the same way, the addition of the “.com.au” suffix and the elimination of spaces in the domain name (as in “bobcatsales” as distinct from “BOBCAT SALES”) are to be disregarded in its assessment of confusing similarity.
The Panel therefore finds that the requirements under paragraph 4(a)(i) of the Policy are made out.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant is required to show that the Respondent has “no rights or legitimate interests in respect of the domain name”. Further assistance as to the meaning of this requirement is given in paragraph 4(c) of the Policy, which provides that:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Essentially, these are matters for a respondent to put forward for the Panel’s consideration. In the present case, no response has been filed and all that the Complainant can do is to point to evidence that indicates that none of these circumstances exists. Taking them one by one, the Panel finds as follows.
1 Use of the disputed domain name in relation to a bona fide offering of goods: While the Complainant’s submissions here are not entirely clear, in essence they seem to be as follows. The Respondent appears to be a seller or reseller of the earth moving and construction equipment of a number of manufacturers, including the Complainant. Accordingly, it cannot be regarded as a bona fide offering of these goods to do so by reference to a domain name that incorporates the Complainant’s trade mark when the Complainant has no connection or affiliation with the site. It might well be different if the Respondent’s website offered only the Complainant’s products and services – in other words, as a genuine reseller or distributor – but to do so in relation to a number of manufacturers’ products and services cannot be a bona fide or legitimate use of the disputed domain name. This is particularly so, when regard is had to the fact that the Respondent carries on its business under two distinct trading names in different Australian states, and that this is made explicit on the website.
2 The Respondent’s own name: There is no suggestion that the Respondent has ever been known by the disputed domain name, whether as a business or as an individual.
3 Trade marks are now generic or descriptive: The argument, foreshadowed by the Complainant, that the trade mark BOBCAT is now a generic term and used only descriptively by the Respondent, cannot be supported, having regard to the Complainant’s evidence that the word still retains its trade mark significance as indicated by the Australian Trade Marks Manual and the various dictionary definitions that are cited. Furthermore, the very fact that the BOBCAT trade marks remain registered must be the best evidence that the word BOBCAT has not yet become a descriptive word that can be legitimately used by the Respondent in its domain name (bearing in mind here that it is the disputed domain name that is the focus of our attention here, rather than any uses of the word BOBCAT that appear on the website).
Finally, of course, the Respondent has not filed any Response in the proceeding that provides any explanation for its adoption and use of the disputed domain name. This failure to respond to the Complaint therefore gives rise to the inference that it does not believe that it has any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the requirement under paragraph 4(a)(ii) is established.
C. Registered or Subsequently Used in Bad Faith
Under paragraph 4(a)(iii) of the auDRP, the Complainant must show that the disputed domain name has been registered or is being subsequently used in bad faith. Paragraph 4(b) of the auDRP provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you [the Respondent] have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.
It will be noted that, unlike paragraph 4(a)(iii) of the UDRP, under paragraph 4(a)(iii) of the .auDRP bad faith at either the time of registration of the disputed domain name or at the time of any subsequent use of the disputed domain name will suffice. Of the various factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to the time of registration, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both at the time of registration or afterwards.
In the present proceeding, the situation is complicated by the fact that the Respondent has not filed any Response or provided any evidence as to its intentions in registering and maintaining the disputed domain name. As noted above, under paragraph 14(b) of the Rules, where a party defaults in complying with any requirement of the Rules – and this would include responding to the Complaint – the Panel is entitled to draw from such default such inferences, as it considers appropriate.
So far as the factors listed in paragraph 4(b) are concerned, it does not appear that the circumstances referred to in sub-paragraph (i) arise. However, it can be inferred that the circumstances referred to in the remaining sub-paragraphs are present. The following points are relevant here:
1. As noted above in relation to paragraph 4(a)(ii), there seems to be nothing legitimate in the adoption and use of the disputed domain name, given that the Respondent has its own business and the word BOBCAT retains a clear trade mark connotation. Furthermore, given that the Respondent’s website sells and promotes the products and services of manufacturers other than those of the Complainant, it is difficult to see that the incorporation of the Complainant’s trade mark in its domain name was for any other reason than to attract online customers to its site in the mistaken belief that the site is associated with or linked in some way to the Complainant. In other words, the circumstances referred to in sub-paragraphs 4(b)(iii) and (iv) exist.
2. In the same way, it is difficult to resist the conclusion that the disputed domain name was registered for any other reason than to prevent the Complainant from reflecting its trade mark in a corresponding domain name registration in the .au domain.
3. As in relation to paragraph 4(a)(ii), the Respondent’s failure to file any Response suggests that its registration and subsequent use of the disputed domain name has, indeed, been in bad faith.
Accordingly, the Panel finds that the requirement under paragraph 4(a)(iii) is made out.
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 <bobcatsales.com.au> be transferred to the Complainant.
Dated: June 4, 2012