WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deere & Company v. Ramunas Cepaitis, Helios Corporation LP
Case No. D2015-2188
1. The Parties
The Complainant is Deere & Company of Moline, Illinois, United States of America ("United States") represented by Carpmaels & Ransford, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
The Respondent is Ramunas Cepaitis, Helios Corporation LP of Edinburgh, Scotland, United Kingdom.
2. The Domain Names and Registrar
The disputed domain names <johndeerenosat.com>, <johndeerenvaraosat.com>, <johndeereosat.com> and <johndeerevaraosat.com> are registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 2, 2015. On December 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 3, 2015, 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 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 the Respondent of the Complaint, and the proceedings commenced on December 4, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 28, 2015.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on January 8, 2016. 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 is one of the world's leading companies in the design, development, production and sale of agricultural equipment and machinery under the trademark JOHN DEERE. The mark has been registered e.g. as a Community Trade Mark No. 332874, filed on July 29, 1996 and registered on November 11, 1999.
The disputed domain names were registered as follows:
johndeerenosat.com> was registered on May 12, 2014;
johndeerenvaraosat.com> was registered on June 3, 2013;
johndeereosat.com> was registered on May 12, 2014; and
johndeerevaraosat.com> was registered on June 3, 2013.
5. Parties' Contentions
The disputed domain names are confusingly similar to the Complainant's trade mark because they comprise the trademark with a suffix descriptive in Finnish.
The Respondent has no right or legitimate interest in respect of the disputed domain names. There is no use or any preparations to use the disputed domain name with a bona fide offering of goods or services. There is not and has never been a business relationship between the parties. The Respondent is not commonly known by the disputed domain names. The Respondent is not making noncommercial use of the disputed domain names, rather it redirects to a shopping website for a variety of machines.
The disputed domain names were registered in order to take advantage of the Complainant's well-known trademark JOHN DEERE. The Respondent has registered a large number of famous tractor and car brands with a descriptive suffix in Finnish (such as Audi, BMW, Massey Ferguson etc). All these domain names, including the disputed domain names, link to the website at "www.tuontikoneet.com". The website at "www.tuontikoneet.com" is a platform for selling imported machines, including tractors and spare parts, across Europe. The Respondent has therefore engaged in a pattern of registering other companies' trademarks as domain names.
The disputed domain names were also offered for sale to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Under the second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. According to the third element a complainant must establish that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establishes that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The disputed domain names include the Complainant's trademark in its entirety, combined with descriptive terms in Finnish ("osat" and "varaosat", meaning "parts" and "spare parts", respectively).
In accordance with paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), noting that the disputed domain names consist of the Complainant's trademark along with descriptive words, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trademark and hence the first element of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.
The consensus view among UDRP panels is that once a complainant has made a prima facie showing indicating the absence of the respondent's rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and paragraph 2.1 of the WIPO Overview 2.0.
The Complainant has pointed out that it is not affiliated with the Respondent, it has not authorized the Respondent to use the trademark JOHN DEERE or the disputed domain names, and that the Respondent is not commonly known by the disputed domain names. The Respondent has not rebutted these arguments.
Noting the bad faith use to which the Respondent puts the disputed domain names as described below, the Panel finds no other basis for finding any Respondent rights or legitimate interests.
The Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establishes that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy 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 [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location."
The Panel considers that the Complainant's trademark JOHN DEERE is a well-known trademark at least for tractors and that as an operator of the website "www.tuontikoneet.com", specialized in the sale of tractors (among other machines), the Respondent must have been aware of the Complainant's trademark when registering the disputed domain names.
It is also evident that the Respondent has used to disputed domain names to attract, for commercial gain, Internet users to the Respondent's website, where competing products are offered.
Finally, the Panel also notes that the Respondent has closed some of the websites to which the disputed domain names resolved after being contacted by the Complainant and that the disputed domain names have been offered for sale to the Complainant.
The Panel finds therefore that the disputed domain names were registered and are being used in bad faith. Accordingly, the Panel finds that the third element of the Policy is fulfilled.
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 names <johndeerenosat.com>, <johndeerenvaraosat.com>, <johndeereosat.com> and <johndeerevaraosat.com> be transferred to the Complainant.
Date: January 20, 2016