WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tractor Supply Co. of Texas, LP, Tractor Supply Company v. Yehoshua Glauner

Case No. D2010-1096

1. The Parties

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

The Respondent is Yehoshua Glauner of Herzliya, Israel.

2. The Domain Name and Registrar

The disputed domain name <originaltractorsupply.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2010. On July 2, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 6, 2010, GoDaddy.com, Inc. 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 July 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2010. The Response was filed with the Center on July 27, 2010.

The Center appointed David J.A. Cairns as the sole panelist in this matter on August 10, 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. On the home page at this website the trademark TRACTOR SUPPLY CO. appears on the top left hand side of the page. The home page also contains a link to “Tractor Supply Credit Cards”. The acronym “TSC” is also used on the home 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.

Tractor Supply stores are primarily located in rural areas and the outlying suburbs of major cities. The typical Tractor Supply store has 15,000-24,000 square feet of inside selling space with a similar amount of outside space used to display agricultural fencing, livestock equipment and horse stalls.

Stores supply the unique products to support their customers’ rural lifestyle, from welders and generators to animal care products and men and women’s workwear. You can also find pet supplies, animal feed, power tools, riding mowers, lawn and garden products and more. Each store team includes a welder, a farmer and a horse owner who collectively provide an exceptional depth of knowledge and resources.”

The disputed domain name was registered on June 9, 2010. The Panel entered the disputed domain name (from Spain) on August 13, 2010. The disputed domain name hosted a parking page of GoDaddy.com. It includes the following statement “This webpage is parked FREE courtesy of GoDaddy.com”. The webpage then contains a series of ”sponsored listings”. The parking page also contains the statement “Want to buy this domain? Our domain buy service can help you get it”.

5. Parties’ Contentions

A. Complainant

The Complainants state that 70 years after the Complainants first began using its 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 name. 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 disputed domain name is confusingly similar to the Complainants’ own “www.tractorsupply.com” domain name and its trademarks because it incorporates entirely the predominant feature, namely, TRACTOR SUPPLY, only adding the generic and laudatory term “original”. It states that the addition of such a generic and laudatory term is insufficient to differentiate the domain name and the trademark; rather it enhances the connection.

The Complainants 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 Panel decisions.

The Complainants also state that the Respondent has no rights or legitimate interest in the disputed domain name. It states 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 noncommercial 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 websites that compete with the Complainants. 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. Further, in light of the Complainants’ federal trademark registrations and the widespread use of the TRACTOR SUPPLY trademarks it is highly unlikely that the Respondent was unaware of the Complainants’ rights to 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. Given the similarity of the disputed domain names to the Complainants’ <tractorsupply.com> domain name it is inconceivable that the Respondent was not aware of the Complainants’ rights at the time of the registration of the domain name. Furthermore, the Complainants’ attach a screenshot of the Respondent’s website at the disputed domain name that includes the notice that “This domain is for sale!”. The Respondent says that given the considerable presence of the Complainants in the retail industry, it is evident that the Respondent also registered and is holding the disputed domain name to prevent the Complainants from registering it and seeks to benefit from those customers searching for the Complainant’s website. Further, the Complainants state that the Respondent’s registration amounts to typosquatting and typosquatting is virtually per se registration in use in bad faith. Finally, the Complainants 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.

The Complainants request a decision that the disputed domain name be transferred to the Complainants.

B. Respondent

The Respondent states that the Complainants do not hold any exclusive or enforceable rights in the word combination “tractor supply”, and that the disputed domain name in no way infringes the service marks.

The Respondent states that “tractor supply” is generic when not used as a trademark and as a description of a product or a domain name content it constitutes fair use. The use of the word original is not arbitrary or laudatory as the Complainants allege, but rather significant in that it denotes a specific category of tractor parts which are from the original manufacturer.

The Respondent states that allegations of consumer confusion are unfounded as the website at the disputed domain name does not sell services or products containing the Complainants’ trademarks. The Respondent denies any attempt to deceive and rejects the analogy of the various domain name decisions referred to by the client. The Respondent states that the words “tractor supply” without:“co.”, “company’ or “TSC” bear no more fame as a service mark than ‘auto supply’. The Respondent denies that this is typosquatting. It denies that the parking page is in any way similar in appearance to the website of the Complainants, and that it was “virtually inconceivable that consumers of the TSC Tractor Supply Company would arrive at [Respondent’s] website by accident or confusion, see the image of heavy equipment and hyperlinks to Semi Truck Insurance and believe they had arrived at tractorsupply.com.”

The Respondent states that the registration of the disputed domain name represents the acquisition of property and rights which is totally legitimate and a lawful business, and not an action of bad faith. The Respondent states that he lives in Israel where no tractor supply stores are visible or advertised. Prior to the Complaint, the Respondent had no knowledge of the Complainants’ business. The Respondent states that he is a marketing specialist who works as a marketing writer, website designer and creative content person. In order to provide clients with branding and websites, it is important that any name the Respondent foresees as useful is purchased before selling to a client an idea for an Internet presence. The Respondent says that “.com” names are becoming progressively less available so it is important to purchase names that the Respondent sees as potentially useful to clients. The Respondent states that the fact that he is a marketing professional involved in developing web presence and marketing strategies, the registration of domains and the value-added in the services offered represent a real and legitimate interest in the disputed domain name.

The Respondent denies any intent to confuse. He refers to the classes of goods covered by the trademark registrations. He refers to the exhibits attached to the Complaint and states that not one single product found on the Complainant’s website at “www.tractorsupply.com” can be seen on the Annex L [screenshot of the Respondent’s website] image. The Respondent also answers many specific allegations in the Complaint. Finally he notes that “tractor supply” is lawfully used by numerous companies throughout the world.

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 and legitimate interests in the disputed domain name.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant owns the TRACTOR SUPPLY CO. trademark registration 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 refers to themselves as “Tractor Supply”, and the use of “tractor supply” for the Complainants’ own online 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 Panel notes at the outset that the disputed domain name does not, as the Complainant argued in relation to both the first and third elements of the Policy, constitute an example of typosquatting as the eight letter word “original” is unlikely to be entered by an Internet user in error.

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 the addition of the word ‘original’ and the absence of the word CO. The spaces between words in the registered trademark are disregarded for the purposes of this comparison.

The abbreviation “CO.” identifies the trademark as being a business name, and serves to identify (and therefore emphasise) TRACTOR SUPPLY as the trading name of the business. TRACTOR SUPPLY is therefore the distinctive element of the registered trademark. The distinctiveness of this element of the registered trademark is confirmed by its independent use by the Complainants as a trademark, and the secondary meaning which attaches to it.

The Respondent argues that the words “tractor supply” are generic, and as a description of a product or a domain name content constitutes fair use. Further, the Respondent states that the word “original” is significant in that it denotes a specific category of tractor parts which are from the original manufacturer.

The word “original” is a very common adjective, and rather than conferring distinctiveness on a domain name it begs the question of what the noun is that has the characteristic of being original. The word “original” in the disputed domain name refers to “tractor supply” and therefore directs attention to this element of the disputed domain name. It is true, as the Respondent suggests, that the words “tractor supply” are descriptive of the supply of tractors, but at the same time these two words also constitute the distinctive element of the disputed domain name.

The descriptiveness of the words “tractor supply” is potentially relevant to the second and third elements of the Policy as this expression may legitimately and in good faith be used in the domain name of a business or proposed business of the supply of tractors and parts, but this descriptiveness does not avoid a confusing similarity of the disputed domain name with the Complainants’ TRACTOR SUPPLY CO. registered trademark.

The Respondent denied confusing similarity on the basis that there is no similarity between the Complainants’ website and the website at the disputed domain name and that it was “virtually inconceivable that consumers of the TSC Tractor Supply Company would arrive at [Respondent’s] website by accident or confusion, see the image of heavy equipment and hyperlinks to Semi Truck Insurance and believe they had arrived at tractorsupply.com.” However, the confusing similarity referred to in paragraph 4(a)(i) of the Policy relates to name similarity and not website similarity.

For these reasons, the Panel finds that for purposes of the present proceedings the words “tractor supply” constitute the distinctive element of both the TRACTOR SUPPLY CO. registered trademark and the disputed domain name. The Panel finds that the disputed domain name is confusingly similar to the TRACTOR SUPPLY CO. registered trademark, and so the first element of the Policy is 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 ORIGINAL TRACTOR SUPPLY or a TRACTOR SUPPLY trademark; (ii) the Respondent is not authorized or licensed by the Complainants to use its 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.

The Respondent claims that he had no knowledge of the Complainants’ business at the time of registration. He says that he is a marketing specialist who works as a marketing writer, website designer and creative content person. In order to provide clients with branding and websites, it is important to own domain name registrations. The Respondent says that “.com” names are becoming progressively less available so it is important to purchase names that the Respondent sees as potentially useful to clients. The Respondent states that such acquisition of property and rights in domain names is totally legitimate, and is not an action of bad faith. These statements suggest that the Respondent’s business consists in the purchase of domain names for the purpose of subsequent resale together with related website design and branding.

The investment in domain names (whether for the purpose of simple resale or for resale together with other services) may well be a lawful business provided that the rights of trademark owners are respected. But an investor in domain names cannot rely on its own ignorance or lack of inquiry at the time of registration to legitimate a registration that is confusingly similar to existing trademark rights. A simple websearch at the time of registration would have alerted the Respondent to the existence of the Complainants’ business under the registered TRACTOR SUPPLY CO. and the unregistered TRACTOR SUPPLY trademarks.

The descriptiveness of the words “tractor supply” might serve to create rights or legitimate interests in a domain name containing these words, notwithstanding the Complainants’ trademark rights, where a respondent can point to use or preparations for the use of the domain name in connection with a bona fide business involving the sale of tractor or related goods and services (such as tractor parts). It is quite possible, as the Respondent argues, that “‘tractor supply’ is lawfully used by numerous companies throughout the world.” However, there is no evidence that the Respondent has a business, or that his website design and branding business has any potential project or client, involving goods or services accurately described by the disputed domain name. Rather, the evidence points to the use by the Respondent of the disputed domain name for immediate commercial gain. The Respondent offered the disputed domain name for sale (at least initially), and established a landing page involving sponsored links to suppliers that included competitors of the Complainants. Accordingly, the Respondent’s alleged business purposes for the acquisition of the disputed domain name do not, in these circumstances, create any rights or legitimate interests in respect of the disputed domain name.

For these reasons, this Panel finds that the Respondent has no rights or legitimate interests in 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) of the Policy 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) of the Policy. 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 Complainant alleged that the Respondent’s website was providing links to sites of the Complainants’ competitors or offering goods and services almost identical to goods and services offered by the Complainants and that this constitutes bad faith. The Complainants did not identify the competitors whose sites could be linked through the Respondent’s website. The Respondent denies any intent to confuse, and referring to the exhibits attached to the Complaint and states that not one single product found on “www.tractorsupply.com” can be seen on the Annex L [screenshot of the Respondent’s website] image. Taking a single item from Annex L (farm manure spreader) and entering this in the search engine of the Complainants’ website showed that the Complainants sold this type of product. The Panel finds that the website at the disputed domain name includes links to sites offering products that compete with the products of the Complainants and that this is further evidence of bad faith.

Further, the Respondent registered the disputed domain name in reckless disregard for the rights of the Complainants as trademark owners, and then immediately offered the disputed domain name for sale for a price exceeding its out-of-pocket expenses. The Panel finds the Respondent’s intention was to profit from a potentially attractive domain name irrespective of the possible rights of others in this domain name, and this constitutes bad faith.

As a result, the Panel concludes that the Respondent has registered and is using the disputed domain name 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, <originaltractorsupply.com> be transferred to the Complainants.

David J.A. Cairns
Sole Panelist
Dated: August 24, 2010