CNH America LLC v. Steve Brim
Case No. D2015-1188
1. The Parties
Complainant is CNH America LLC of Racine, Wisconsin, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, United States of America.
Respondent is Steve Brim of Lynden, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2015. On July 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2015, the Registrar transmitted by email to the Center its verification response denying that Domains By Proxy, LLC is the registrant and providing WhoIs information indicating that Steve Brim is the registrant. The Center sent an email communication to Complainant on July 16, 2015, 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 July 16, 2015.
The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 10, 2015.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on August 17, 2015. 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 owns several Canadian trademark registrations for the mark NEW HOLLAND for farm machinery and other uses. These registrations date back to at least 1959. Complainant also attached to the Complaint United States of America trademark registration certificates that claim dates of first use as early as 1940. Complainant asserts that the United States registrations are in the names of Complainant’s predecessors.
Respondent registered the disputed domain name on June 8, 2015.
5. Parties’ Contentions
Complainant asserts that it is “a leading manufacturer and supplier of agricultural and construction equipment and parts therefor, with more than 33,000 employees working in offices located in approximately 170 countries”, and that Complainant and its predecessors have been using the mark NEW HOLLAND in connection with agricultural and construction equipment products, parts and related services since at least 1940. Complainant asserts that as a result of Complainant’s extensive use, marketing and promotion, and protection of the NEW HOLLAND marks, “CNH's NEW HOLLAND marks are exceedingly well-known and famous, and recognized in the United States and around the world as an indication of products and services emanating from CNH.” Complainant asserts that the disputed domain name is confusingly similar to the NEW HOLLAND mark because it consists of the mark plus the generic term “tractor” (which Complainant asserts is one of its primary products) plus the generic Top-Level Domain (gTLD) “.parts”. Complainant asserts that it has not licensed or otherwise permitted Respondent to use the NEW HOLLAND mark, that Respondent is not commonly known by the disputed domain name and has not acquired any trademark or service mark rights to use that name, that Respondent knows or has constructive notice of Complainant’s trademark rights in the NEW HOLLAND mark, that Respondent has used the disputed domain name to intentionally trade on Complainant's reputation, goodwill and trademarks, and that “there exists no plausible or contemplated use of the [disputed domain name] by Respondent that would be legitimate or lawful”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Under paragraph 4(a) of the Policy, Complainant must prove the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.
Complainant’s Canadian trademark registrations attached to the Complaint demonstrate that Complainant has rights in the NEW HOLLAND mark. However, the Panel notes that all of the other trademark registrations attached to the Complaint are registered to entities other than Complainant. Complainant asserts in its Complaint that “[s]ince at least 1940, [Complainant], through its predecessors in interest, has been using the mark NEW HOLLAND in connection with its agricultural and construction equipment products, parts and related services.” This statement is not supported by evidence though, and does not demonstrate that Complainant, as opposed to these other entities, has any interest in, or right to enforce, the subject trademarks.
The disputed domain name consists of the NEW HOLLAND mark with the generic word “tractor” appended to the end, and the “.PARTS” top-level domain (“gTLD”).
The addition of generic words to a trademark does not avoid confusing similarity to the mark. See Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TVdot.net, Inc. f/k/a Affinity Multimedia, WIPO Case No. D2000 1253 (“Although the domain names at issue are not identical to the Complainant’s marks, a finding of similarity cannot be avoided by adding a common or generic term to the complainant’s mark”). See also Delta Air Lines, Inc. v. Ruslan Moussaev, WIPO Case No. D2009 0718 (“Use of the word ‘flys’, which describes the service Complainant provides and which is associated with its trademark, tends to increase rather than diminish the confusing similarity between the Domain Name and Complainant’s mark”).
Indeed, in a case not cited by Complainant, it was noted that the addition of the generic word “tractor” to the mark NEW HOLLAND “does not detract from the distinctiveness of the NEW HOLLAND mark but in the view of the Panel serves to increase the likelihood of confusion with the Complainant’s trademark since it is one of the products sold by the Complainant.” CNH America LLC v. UnderHost Networks Ltd, WIPO Case No. D2013 1252.
The addition of the “.PARTS” top-level domain also does not detract from confusing similarity. Audi AG, Automobili Lamborghini Holding S.p.A., Skoda Auto a.s., Volkswagen AG v. JUS TIN Pty Ltd., WIPO Case No. D2015-0827 (“The only difference between the two is the addition of the ‘.social’ TLD to that mark to form each one of the disputed domain names, with that addition being irrelevant in assessing confusing similarity or identity under paragraph 4(a)(i) of the Policy and thus typically ignored.”); WRc plc v. W&R Corp., WIPO Case No. D2007 1284 (“The addition of the generic top-level domain ‘.com’ is insufficient to distinguish the domain name from Complainant’s mark”).
Indeed, in this case the addition of the gTLD “.parts” to the words “new holland tractors” implies that the disputed domain name may lead to a website that relates to parts for New Holland tractors, and thus potentially increases the likelihood of confusion. Cummins Inc. v. Jamie Lent, WIPO Case No. D2015-0188 (“by including the generic words ’performance parts’ with the Complainant’s mark CUMMINS to form the disputed domain name, the potential for user confusion is likely to be exacerbated, not reduced”).
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”, paragraph 4(a)(ii) of the Policy.
“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 [Respondent’s] rights or legitimate interests to the domain name[s] for purposes of paragraph 4(a)(ii):
(i) before any notice to [Respondent] of the dispute, [Respondent’s] 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) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is] 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.”
Policy, paragraph 4(c).
There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by . Rather, Complainant asserts that Respondent is not licensed or otherwise permitted to use Complainant’s NEW HOLLAND mark and that Respondent has no trademark or service mark rights or registrations in the NEW HOLLAND mark. These allegations make out a prima facie case of lack of rights or legitimate interests, which Respondent has not rebutted. See LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138 (“It is clear that no license or authorization of any kind has been provided by Complainant to Respondents to use any of its trademarks or to apply for or use any domain name incorporating those marks. … Thus, it is clear that no bona fide or legitimate use of the domain names could be claimed by Respondents.”); Marriott International, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610 (“No evidence was presented that at any time had the Complainant ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the marks MARRIOTT REWARDS or MARRIOTT in any manner. Accordingly, the Panelist finds that the Respondent, prior to any notice of this dispute, had not used the domain name in connection with any type of bona fide offering of goods or services. Additionally, no evidence has been presented that the Respondent is commonly known by the domain name or has been making any legitimate noncommercial or fair use of the domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish the mark at issue. The Panelist therefore concludes that the Respondent has no rights or legitimate interests in the domain name and that Element (ii) has been satisfied.”); Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000 0003 (“In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name.”).
Accordingly, the Panel finds that the present record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
“[T]he 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 [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out of pocket costs directly related to the domain name; or
(ii) [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 [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Complainant asserts that Respondent “may” have had actual knowledge of Complainant’s trademark and in any event “had legal constructive notice of [Complainant’s] trademark rights in NEW HOLLAND since 1956, when [Complainant’s] predecessor in interest filed its application to register NEW HOLLAND with the United States Patent and Trademark Office”. Under 15 U.S.C. Section 1072, registration of a mark on the principal register provides constructive notice of the registrant’s claim of ownership. In this regard, the Panel notes that United States Patent and Trademark Office records indicate that another entity than Complainant has registered the NEW HOLLAND mark on the principal register. Be it as it may, Complainant has provided evidence of trademark rights in other jurisdictions.
Furthermore, the Panel finds that Respondent had actual knowledge of Complainant as the fact that the disputed domain name itself comprises the NEW HOLLAND mark, plus one of the products Complainant sells under the NEW HOLLAND mark (i.e., “tractor”), plus the gTLD “.parts”, suggests that the purpose of the disputed domain name has something to do with parts for Complainant’s tractors. Complainant alleges that the disputed domain name “consists of NEW HOLLAND together with the addition of the generic term ‘tractor’ (one of [Complainant’s] primary products) and the gTLD “.parts”, and that Respondent “has used the [disputed domain name] to intentionally trade on [Complainant’s] reputation, goodwill and trademarks”. Such actions are indicative of bad faith. See American Honda Motor Co., Inc. v. Michell Huddleston, WIPO Case No. D2011-0076. In verifying the allegations in the Complaint, it came to the Panel’s attention that there might possibly be a relationship between the Respondent and a tractor business located at Respondent’s address. The Panel has disregarded such a possibility however, as the case file does not present any evidence of Respondent being associated with such a business; rather the website at the disputed domain name directs to a pay-per-click website.
Accordingly, based on the Complaint, the applicable attachments to the Complaint, and Respondent’s default and failure to counter Complainant’s allegations, the Panel finds that the present record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.
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 be transferred to the Complainant.
Bradley A. Slutsky
Date: August 31, 2015