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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Clark Equipment Company v. Contact Privacy Inc. Customer 1243466331 / Savannah Smith, Low Country Machinery

Case No. D2019-1358

1. The Parties

The Complainant is Clark Equipment Company, United States of America (“United States”), represented by Quarles & Brady LLP, United States.

The Respondent is Contact Privacy Inc. Customer 1243466331, Canada / Savannah Smith, Low Country Machinery, United States.

2. The Domain Name and Registrar

The disputed domain name <bobcatofsavannah.com> (the “Disputed Domain Name”) is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2019. On June 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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 the Complainant on June 17, 2019, 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 amended Complaint on June 21, 2019.

On June 17, 2019, the Center received an email communication from the Respondent requesting to explore settlement with the Complainant. On the same day, the Center sent to the Parties a settlement email to which the Complainant replied on June 21, 2019, requesting suspension of the administrative proceedings herein. On June 24, 2019, the proceedings were suspended until July 24, 2019. Since settlement was not successful, on July 3, 2019, the Complainant requested the proceedings to be reinstituted. The Center reinstituted the administrative proceedings on July 4, 2019.

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 the Respondent of the Complaint, and the proceedings commenced on July 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2019. The Respondent did not submit any response. Accordingly, on July 26, 2019, the Center notified the Parties that it would proceed to panel appointment.

The Center appointed Lynda M. Braun as the sole panelist in this matter on August 5, 2019. 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, which does business as Bobcat Company, is a global provider of compact equipment for construction, landscaping, agriculture, and related goods and services. In 1958, the Complainant introduced the first compact loader into the market under the brand name and trademark BOBCAT. For 60 years, the Complainant has manufactured and sold BOBCAT brand loaders, excavators, backhoes, and other machines.

The Complainant’s BOBCAT equipment is sold, rented, and serviced throughout the United States through an extensive dealer network, and each dealer is granted authorization to use the BOBCAT trademark in connection with its business name and a domain name, pursuant to a license agreement. Some of the Complainant’s authorized dealers operate domain names composed of BOBCAT followed by terms descriptive of the location of the dealer, e.g., <bobcatofseattle.com> and <bobcatofdayton.com>. The Complainant has an authorized dealer that operates under the name “Bobcat of Savannah” and is located not far from the Respondent’s place of business in Georgia, United States.

The Complainant owns numerous trademark registrations worldwide, including registrations in the United States, for compact equipment such as skid-steer loaders, frontend loaders, backhoes, trenchers and excavators and related equipment, parts, merchandise, and services, including retail services. The United States trademarks include, but are not limited to, BOBCAT, United States Registration No. 670566, registered on December 2, 1958; BOBCAT, United States Registration No. 890034, registered on April 28, 1970; and BOBCAT, United States Registration No. 1620865, registered on November 6, 1990 (hereinafter referred to as the “BOBCAT Mark”).

The Complainant owns the domain name <bobcat.com>, which resolves to its official website at “www.bobcat.com”. The website provides information about the Complainant and its BOBCAT equipment and services. In addition, the Complainant owns the domain names <bobcatused.com>, <bobcatequipment.com> and <bobcatparts.com>, all of which resolve to the Complainant’s official website.

The Respondent registered the Disputed Domain Name on November 10, 2018. The Disputed Domain Name redirects to the website at “www.lowcountryjcb.com” and promotes construction, landscaping and earthmoving equipment manufactured by the Respondent, the Complainant’s competitor.

On May 29, 2019, the Complainant sent a cease and desist letter to the Respondent, demanding that it cease using the Complainant’s BOBCAT Mark in the Disputed Domain Name and cease redirecting the Disputed Domain Name to “www.lowcountryjcb.com”. The Respondent responded by email, stating:

“I purchased this domain name after you client rented a bill board sign in front of my dealership to advertise on. I own this domain free and clear, and I bought it legally… if your client would like to purchase this domain name from me, Im willing to sell it to them for what the domain name is worth… What is the value they place on that domain name?”

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- The Disputed Domain Name is confusingly similar to the Complainant’s trademark.

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

- The Disputed Domain Name was registered and is being used in bad faith.

- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) The Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the BOBCAT Mark.

It is uncontroverted that the Complainant has established rights in the BOBCAT Mark based on its many years of use as well as its numerous trademark registrations for the BOBCAT Mark worldwide, including in the United States. The Disputed Domain Name <bobcatofsavannah.com> consists of the BOBCAT Mark followed by the terms “of” and “savannah”, and followed by the generic Top-Level Domain (“gTLD“) “.com”.

It is well established that a domain name that wholly incorporates a trademark is confusingly similar to that trademark for purposes of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Here, the Disputed Domain Name contains the Complainant’s entire BOBCAT Mark and thus, the Disputed Domain Name is confusingly similar to the BOBCAT Mark.

Moreover, the addition of the terms “of” and “savannah” to the Complainant’s BOBCAT Mark does not prevent a finding of confusing similarity. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. See also Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 (a domain name incorporating a well-known trademark combined with a geographically descriptive term is confusingly similar to the trademark); Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438 (the addition of the term “korea” in <ikea-korea.com> does not prevent the domain name from being confusingly similar to the complainant’s trademark).

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its BOBCAT Mark. The Respondent does not run any business under the name “Bobcat of Savannah” nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Thus, the Panel finds that the Respondent is neither making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, the Respondent attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s BOBCAT Mark. The Panel finds that the Respondent registered the Disputed Domain Name to attract customers to its website by using a domain name that is confusingly similar to the Complainant’s BOBCAT Mark. The use of a domain name to intentionally attempt to attract Internet users to a registrant’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website for commercial gain demonstrates registration and use in bad faith.

In the present case, the Respondent registered the Disputed Domain Name to conform to a domain registration of an authorized dealer of the Complainant, that is, a domain name composed of the BOBCAT Mark followed by a descriptive geographic term. The Respondent’s attempt to use the significant goodwill in the BOBCAT Mark by registering the Disputed Domain Name and using that Disputed Domain Name to misdirect visitors to a website which appears to be the Complainant’s or an authorized dealer’s official site, demonstrates the Respondent’s bad faith registration and use of the Disputed Domain Name under the Policy, paragraph 4(b)(iv). Such use creates the impression that the Respondent’s website is sponsored, affiliated with or endorsed by the Complainant or the Complainant’s authorized dealer.

The use of a domain name in such a manner to advertise or redirect to a competing business—as the Respondent has done in this case - has been found to constitute bad faith registration and use. See Phillip Morris USA, Inc. v. Mariana Gemenitzi, WIPO Case No. D2009-1715 (finding bad faith use because the respondent was attempting to divert customers from the complainant and thus disrupt the complainant’s business). Here the Respondent is using the Disputed Domain Name to divert the Complainant’s customers from the Complainant’s legitimate website and disrupt the Complainant’s and its authorized dealer’s business.

Second, depending on the circumstances, bad faith may be found where the respondent knew or should have known of the registration and use of the complainant’s mark prior to registering the disputed domain name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name over 60 years after the Complainant first registered and used the BOBCAT Mark, and during which time the Complainant enjoyed a high degree of fame for its goods.

Moreover, the Respondent’s statements in its May 29, 2019 email to the Complainant are admissions that its intention in purchasing the Disputed Domain Name was to retaliate against “Bobcat of Savannah”, the Complainant’s authorized dealer, when the dealer advertised on a nearby billboard. This demonstrates that the Respondent had actual knowledge of the Complainant’s rights in the BOBCAT Mark prior to registration of the Disputed Domain Name and is an additional indication of bad faith.

Third, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Panel concludes that the Respondent registered and used the Disputed Domain Name in bad faith.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant

7. Decision

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 <bobcatofsavannah.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: August 8, 2019

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