Complainant is Sherwood Tractor Inc. of Rose Bud, Arkansas, United States of America (“United States”), represented internally.
Respondent is Nathan Pruss of Cabot, Arkansas, United States / Tyler Toney, Bruno’s Powersports of Cabot, Arkansas, United States, represented by Friedman Law Group, PLLC, United States.
The disputed domain names <sherwoodtractor.com> and <sherwoodtractors.com> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2018. On October 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 16, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2018. The Response was filed with the Center on November 19, 2018. On November 20, 2018 and December 3, 2018, the Center received two email communications from Complainant.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on December 4, 2018. 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.
Complainant, Sherwood Tractor Inc, is an agricultural equipment dealer based in the state of Arkansas, the United States. Complainant uses the trade name and mark SHERWOOD TRACTOR for its business that sells and services tractors, lawn mowers and other agricultural equipment of various third-party manufacturers. Complainant was incorporated in Arkansas on July 1, 2009. Complainant registered the domain name <sherwoodtractorinc.com> on June 10, 2013 and at some point thereafter started using the <sherwoodtractorinc.com> domain name with a website promoting the products and services offered by Sherwood Tractor.
Respondent, Bruno’s Powersports, is also an agricultural equipment dealer based in the state of Arkansas. Respondent is a competitor of Complainant and uses the trade name Bruno’s Powersports for its business. Respondent operates a website at “www.brunospowersports.com” that promotes the products and services offered by Bruno’s Powersports. Respondent Nathan Pruss is the owner of Bruno’s Powersports and Respondent Tyler Toney is either an employee of Respondent Bruno’s Powersports or otherwise affiliated with Respondent Bruno’s Powersports.
The disputed domain name <sherwoodtractors.com> was registered on November 9, 2015 by Respondent Nathan Pruss. The disputed domain name <sherwoodtractor.com> was created on April 1, 2011, but was acquired by Respondents Tyler Toney and Bruno’s Powersports on or about October 3, 2018. The disputed domain names currently redirect to the website of Bruno’s Powersports at “www.brunospowersports.com”.
The Parties’ dispute appears to have arisen from the use by Complainant at some point in 2018 of keywords allegedly based on the Bruno’s Powersports name in a Google search advertising campaign. After the dispute arose, Respondent started using the disputed domain names as a redirect to Respondent’s website at “www.brunospowersports.com”. Complainant contacted Respondent Nathan Pruss on October 11, 2018 concerning the use of the disputed domain names. The Parties, however, did not resolve their differences and that same day Complainant sent a demand letter and complaint to GoDaddy.com, LLC regarding the disputed domain names. Complainant thereafter filed the Complaint in this proceeding on October 15, 2018.
The Complaint in this matter is brought against multiple Respondents. In determining whether a single consolidated complaint can be brought against multiple respondents, panels typically look at whether (i) the disputed domain names or the corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. See section 4.11.2, Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Based on the evidence submitted, which is not contested by Respondent, the Panel finds that the disputed domain names are subject to common control. The disputed domain names have been registered by or for Respondent Bruno’s Powersports by parties affiliated with Bruno’s Powersports. The disputed domain names all use similar addresses and other contact information and both disputed domain names currently redirect to the same website at “www.brunospowersports.com”. Under these circumstances, the Panel finds that consolidation would be fair and equitable to all parties. (Respondents in this proceeding will hereinafter be referred to collectively as “Respondent” in the singular form.)
Complainant asserts that it owns common law rights in the name and mark SHERWOOD TRACTOR based on Complainant’s use of the name SHERWOOD TRACTOR since July 1, 2009 as the name for its agricultural equipment dealership.
Complainant contends that the disputed domain names are identical or confusingly similar to Complainant’s SHERWOOD TRACTOR name and common law mark as they both contain the SHERWOOD TRACTOR name and common law mark in its entirety.
Complainant argues that Respondent has no rights or legitimate interest in the disputed domain names as Respondent, who is a competitor of Complainant, (i) is using the disputed domain names which are based on Complainant’s SHERWOOD TRACTOR name and mark to misleadingly attract and redirect consumers to Respondent’s website at “www.brunospowersports.com”, and (ii) is not commonly known by the name or mark SHERWOOD TRACTOR.
Lastly, Complainant asserts that Respondent has registered and is using the disputed domain names in bad faith as Respondent is using the disputed domain names to attract and redirect consumers to Respondent’s website. In that regard, Complainant argues that in a recorded conversation on October 11, 2018 between a representative of Complainant and Respondent Nathan Pruss (a copy of which is submitted as an exhibit in this proceeding), Mr. Pruss admitted that the disputed domain names had been acquired by Respondent and are being used in retaliation for Complainant’s alleged use of keywords based on Respondent’s business name as part of a Google search advertising campaign. Complainant also maintains that Respondent has sought to disrupt Complainant’s business, as Mr. Pruss purportedly threatened to use the disputed domain names for a warning website to advise consumers not to buy tractors from Complainant.
Respondent rejects Complainant’s contentions.
Respondent asserts that Complainant has no trademark rights in SHERWOOD TRACTOR, as Complainant does not own a trademark registration for SHERWOOD TRACTOR. Respondent further asserts that Complainant’s filing for the company name Sherwood Tractor Inc. does not provide Complainant with valid or protectable trademark rights in SHERWOOD TRACTOR. Respondent maintains that because Complainant and Respondent are both involved in the sale of agricultural equipment, the registration and use of the disputed domain names that contain the word “tractor” holds a valid purpose for either party and, as such, Respondent acquired the disputed domain names for such lawful purpose.
Respondent argues that it has a legitimate interest in the disputed domain names as Respondent’s business is located near the town of Sherwood, Arkansas and Respondent’s use of the disputed domain names is for the valid purpose of targeting consumers in Sherwood, Arkansas who might be looking for agricultural equipment in that locale. Respondent further contends that it has a legitimate interest in the disputed domain names, which are based on the town name Sherwood, given that Respondent is considering the possibility of opening an additional business location in Sherwood, Arkansas.
Lastly, Respondent asserts that it has not acted in bad faith as the disputed domain names are being used for the legitimate purpose of targeting web traffic that is seeking agricultural equipment in the town of Sherwood, Arkansas. Respondent argues that although the Parties have an underlying dispute, such has no bearing on Respondent’s legitimate interest and lawful use of the disputed domain names.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
Complainant does not have an existing or pending trademark registration or application for the mark SHERWOOD TRACTOR. Respondent argues that given Complainant’s lack of a trademark registration for SHERWOOD TRACTOR, the mere filing of the company name Sherwood Tractor, Inc. by Complainant in 2009 does not provide Complainant with any enforceable rights in the mark SHERWOOD TRACTOR. Respondent’s arguments, in this regard, are incorrect as to parties based in the United States. The fact that a party based in the United States does not own a trademark registration does not mean that a party does not own any trademark rights in a particular term or designation. In the United States, as a matter of trademark law, trademark rights arise out of use, not registration, of a designation or term. Consequently, the issue before the Panel is whether, and to what extent, Complainant owns common law or unregistered rights in SHERWOOD TRACTOR, and when and to what extent such rights arose. WIPO Overview 3.0 at section 1.3.
The evidence submitted in this proceeding is limited. It appears that Complainant was incorporated in the state of Arkansas on July 1, 2009 and that Complainant registered the domain name <sherwoodtractorinc.com> on July 10, 2013. Complainant maintains that since its incorporation in July 2009 Complainant has used, and has been known as, SHERWOOD TRACTOR. Complainant supports that contention by pointing to its website at “www.sherwoodtractorinc.com” which prominently features the name and mark SHERWOOD TRACTOR at the top of the home page of the website. Given Complainant’s claim, the Panel in its discretion under its general powers pursuant to paragraphs 10 and 12 of the UDRP Rules has for the benefit of the Parties reviewed archival website pages for the <sherwoodtractorinc.com> domain name which are available through the Internet Archive at “www.archive.org” and “www.domaintools.com”. WIPO Overview 3.0 at section 4.8. The Panel has confirmed that at least as early as December 18, 2014, Complainant had a website at the <sherwoodtractorinc.com> domain name that featured the name and mark SHERWOOD TRACTOR. Based on this review and the evidence submitted, the Panel concludes that Complainant had more likely than not developed some common law rights in the SHERWOOD TRACTOR mark in connection with its agricultural equipment dealership by at least as early January 2015 in a limited geographic region in Arkansas where Complainant and Respondent are based.
That Complainant has some common law rights in SHERWOOD TRACTOR for the purposes of the first element of the Policy is in fact confirmed by Respondent’s own statements. In the recorded conversation from October 11, 2018 submitted by Complainant, and which Respondent does not contest occurred, Respondent clearly acknowledges, both expressly and implicitly, that Complainant is known by the name SHERWOOD TRACTOR. Indeed, in the conversation Respondent specifically refers to Complainant’s president and owner, Bart Sherwood, and his business. Such acknowledgement confirms that the name SHERWOOD TRACTOR refers to a source of agricultural equipment services that is associated with Complainant. Simply put, it is clear that Respondent was aware that SHERWOOD TRACTOR was the name of its competitor and that consumers for agricultural equipment, in at least the geographic area in Arkansas at issue in this proceeding, likely view SHERWOOD TRACTOR as referring to Complainant and not some other entity.
With Complainant’s rights in the SHERWOOD TRACTOR common law mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the generic Top‑Level Domain (“gTLD”) such as “.com”) are identical or confusingly similar with Complainant’s marks. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain names are identical or confusingly similar to Complainant’s SHERWOOD TRACTOR common law mark in its entirety. The addition of letter “s” to the <sherwoodtractors.com> disputed domain name does not distinguish the disputed domain name from Complainant’s SHERWOOD TRACTOR mark that fully appears in the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s SHERWOOD TRACTOR common law mark and in showing that the disputed domain names are identical or confusingly similar to that mark.
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Based on the evidence submitted in this proceeding, it appears that Respondent only recently began using the disputed domain names to attract web users to its website at “www.brunospowersports.com” for purposes of selling competing agricultural equipment to essentially the same consumer base targeted by Complainant. Such use of the disputed domain names does not constitute a legitimate use and is essentially opportunistic, particularly where, as here, the evidence shows that Respondent is a competitor of Complainant and offers for sale competing agricultural equipment products.
Given Respondent’s actual use of the disputed domain names, Respondent’s claim that it registered and is using the disputed domain names for the valid purpose of either targeting consumers in Sherwood, Arkansas who might be looking for agricultural equipment or for a possible additional business location in Sherwood, Arkansas rings hollow and appears to be pretextual. Apart from the fact that Respondent provided no evidence showing that it has any plans for opening an additional business location in Sherwood, Arkansas, the evidence before the Panel does not show that Respondent is simply targeting consumers in Sherwood, Arkansas looking for agricultural equipment, but that Respondent is knowingly using the disputed domain names, which are based on Complainant’s SHERWOOD TRACTOR name and common law mark, to redirect consumers who might be looking for Complainant to Respondent’s website. Indeed, Respondent Nathan Pruss admits as much in the October 11, 2018 conversation submitted by Complainant. In that conversation, Mr. Pruss even threatens to use the disputed domain names for “a warning website where it says ‘warning, whatever you do don’t buy a tractor from Bart Sherwood.’ I’m more than able to do that as well so either way we go I can f*** with him and that’s what I’m going to do.” Such statements belie Respondent’s claimed justification for using the disputed domain names and establish that the purpose for registering and using the disputed domain names is to harm Complainant’s business.
Although the Parties are engaged in a dispute over the alleged actions of Complainant in regards to keyword advertising, Respondent’s use of the disputed domain names to attract and redirect consumers to Respondent’s website as a form of retaliation is not a bona fide use and does not support a claim of having a legitimate interest. There are other ways that Respondent could address its claimed grievances against Complainant, such as by pursuing a possible court action. Knowingly registering disputed domain names based on the name of a competitor and using such to redirect web traffic to one’s own competing website is a classic form of cybersquatting and is simply not legitimate under the UDRP.
Given that Complainant has established with sufficient evidence that it owns common law rights in the SHERWOOD TRACTOR mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain names and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
Given Respondent’s actions as noted above, it is easy to infer that Respondent’s use of the disputed domain names which consists of Complainant’s SHERWOOD TRACTOR mark to attract and redirect consumers to Respondent’s competing website for agricultural equipment is being done opportunistically and in bad faith. The remaining question is whether the conjunctive requirement of bad faith registration has been established by Complainant as to both disputed domain names.
Here, Respondent registered the <sherwoodtractors.com> disputed domain name in November 2015 and acquired the <sherwoodtractor.com> disputed domain name on or about October 3, 2018. In both instances, Respondent registered the disputed domain names after Complainant had developed some common law rights in the SHERWOOD TRACTOR mark. Moreover, what the evidence submitted shows is that Respondent, a competitor of Complainant, knowingly registered or acquired the disputed domain names based on the SHERWOOD TRACTOR mark and then started using the disputed domain names to redirect web users to Respondent’s website at “www.brunospowersports.com” to promote the sales of agricultural equipment by and through Respondent. It thus seems more likely than not that Respondent opportunistically registered and/or acquired the disputed domain names and did so for purposes of either taking advantage of the goodwill associated with Complainant’s SHERWOOD TRACTOR name and common law mark or to harm Complainant’s business.
It is worth reiterating that while Respondent may have a legitimate gripe against the activities of Complainant, registering and using disputed domain names as Respondent has done here to retaliate against a competitor is not legitimate and is, in and of itself, an act of bad faith registration and use. Simply put, there are other ways for Respondent to address its claimed grievances and registering and using disputed domain names based on a competitor’s name for retaliatory purposes is not the way to address such alleged grievance.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.
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 <sherwoodtractor.com> and <sherwoodtractors.com> be transferred to Complainant.
Georges Nahitchevansky
Sole Panelist
Date: December 12, 2018