Tractor Supply Co. of Texas, which has a long history of UDRP wins on “Tractor Supply” domains just lost its attempt to grab the new gTLD domain traveller.tools
The one member panel of Andrew D. S. Lothian didn’t buy the argument that the tractor supply company also owned the exclusive rights to the generic term TRAVELLER.
I think it’s an important case because had the panel found that Tractor Supply owned the rights to the word “Traveller”, based on the company’s avid defense of its generic, but often upheld trademark in the term “Tractor Supply”, anyone owning a domain with the word “traveller” could expect a C & D letter most likely followed up by a UDRP.
Here are the highlights:
The Complainants list some fourteen USA federal registered trademarks and one Canadian trademark for the word mark TRAVELLER covering a variety of goods from electric storage batteries and windshield washing fluid to anti-freeze, pneumatic grease guns and jumper cables. For example, the Complainants cite inter alia USA registered trademark no. 0939476 for the word mark TRAVELLER registered on August 1, 1972 in international class no. 4 covering motor oils, lubricating greases and hydraulic oil. Each of the marks listed by the Complainants is owned by Tractor Supply Co. of Texas, LP and the Complainants state that each is licensed to Tractor Supply Company.
The Respondent is a self-employed professional software developer based in Tel-Aviv, Israel.
The Respondent states that he has over 20 years of experience in information technology.
The Respondent notes that he is actively working full time on a startup entity in the tourism field and purchased the disputed domain name, along with the domain name
The website associated with the disputed domain name is a parking page provided by the Registrar featuring sponsored or pay-per-click links which do not appear to be targeted to the Complainant’s mark; however, nor do they appear to be targeted to the generic meaning of the word “traveller”.
The website also invites the visitor to “Learn More” if they would like to buy the disputed domain name.
On or about November 24, 2013, the Respondent engaged in email correspondence with the providers of a geographic database subscription service. During this correspondence, the Respondent explained that he was developing and testing a mobile application for the tourism industry and enquired about purchasing a premium subscription with a view to obtaining more reliable results.
On November 26, 2013, the database subscription service invoiced the Respondent for twelve months’ premium subscription in the sum of EUR 720 and the Respondent paid that invoice.
On March 3, 2014, the Respondent posted on an online support forum for the geographic database regarding problems which he had encountered in developing his software.
5. Parties’ Contentions
The Complainants contend that the disputed domain name is identical to trademarks in which they own rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainants rely on their registered trademarks for the word mark TRAVELLER and also assert that they have common law trademark rights based on the fact that they have used the mark since 1969 and have engaged in extensive advertising thereof which has rendered the mark distinctive in the minds of relevant consumers who now identify it with the Complainant’s exclusive brand of vehicle and maintenance products and services, thereby giving rise to a secondary meaning. The Complainants note that the generic word “tools” has been added to the Complainants’ mark in the disputed domain name and submit that this does not distinguish the Complainants’ mark therefrom.
The Complainants point out that they offer an online marketplace for their “traveller” branded products.
The Complainants state that the Respondent has not posted an active website associated with the disputed domain name but rather has used a free parking page provided by the Registrar which features sponsored listings for other websites.
The Complainants assert that they have not granted the Respondent rights to use their TRAVELLER mark and that the Respondent has never used the disputed domain name in connection with a bona fide offering of goods or services, nor has demonstrated preparations to do so. The Complainants submit that the disputed domain name is not being used for a noncommercial or fair use purpose and instead is passively held, such passive holding not constituting legitimate use. The Complainants add that there is no evidence that the disputed domain name is the legal name of, or is commonly used to identify the Respondent.
The Complainants state that due to their federal trademark registrations and widespread use of the TRAVELLER mark “it becomes clear that Respondent has registered this particular domain name because of its confusing similarity to Complainants’ TRAVELLER mark”.
The Complainants assert that it is reasonable to infer a primary purpose in respect of the disputed domain name of resale at a profit, based on the extent of the Complainants’ presence in the retail industry. The Complainants also submit that registration and use in bad faith is made out through the Respondent’s passive holding of the disputed domain name based on the strength and widely known nature of the Complainants’ TRAVELLER trademarks, the registration of such marks more than 45 years prior to the registration of the disputed domain name and the lack of evidence of actual or contemplated good faith use of the disputed domain name by the Respondent.
The Respondent requests the Panel to deny the remedies requested by the Complainant.
The Respondent notes that he does not dispute the Complainants’ assertion that the disputed domain name, without its generic Top-Level Domain (“gTLD”) “.tools”, is confusingly similar to the word “traveller” in the Complainant’s TRAVELLER mark.
However, the Respondent points out that the word “traveller” is a generic word having two alternative forms in the English language depending upon British usage (featuring two ‘l’s) and American usage (with a single ‘l’).
The Respondent challenges the Complainants’ averments surrounding their alleged creation of goodwill and fame in the TRAVELLER mark, noting that the Complainants have not provided any substantial evidence thereof apart from a screenshot of a section from the Complainants’ website.
The Respondent produces the results of multiple Internet searches for “traveller” and “traveller” and “tools” on a popular Internet search engine, keyed to the location of the Complainant and the Respondent, which fail to show the Complainant’s TRAVELLER mark on the first three pages.
The Respondent contrasts such results with other well-known generic words in which he states that a strong secondary meaning has been established, such as “apple” or “caterpillar”.
The Respondent submits that the Complainants have no factual basis to assert that the Respondent cannot have any legitimate rights in the disputed domain name where this contains a generic word. The Respondent states that his legitimate interest is not diminished because the disputed domain name is parked, noting that the sponsored links generated by the Registrar do not suggest anything related to the Complainants’ specific goods or line of business.
The Respondent cites paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) in support of his use of a dictionary word in connection with pay-per-click links genuinely related to the generic meaning of the disputed domain name.
The Respondent argues that the Complainants have not shown evidence that their TRAVELLER mark is in widespread use, nor have supported their allegation that the Respondent registered the disputed domain name because of its confusing similarity to such mark. The Respondent states that the assertion that he registered the disputed domain name to hold it for sale to a trademark owner is without merit.
The Respondent notes that the word “traveller” has been given trademark status worldwide to many companies operating in various lines of business and argues that the disputed domain name cannot suggest any unique source, let alone the Complainants’ specific products which are exclusively for sale at their chain of retail stores.
The Respondent contends that he has a legitimate interest in the tourism and/or aviation industry meaning of the phrase “traveler tools” or “traveller tools”.
The Respondent asserts that the term “traveller tools” is used in many online services in such industries and provides evidence of this from an airline website, several online travel agency websites both business and personal, a travel professionals’ website and the Vietnam Travel and Living Guide website.
The Respondent says that he registered the disputed domain name because it is similar to a generic composite term and adds that there is a strong association between the word “tools” and digital offerings which dates back to 1986 and means “options”. The Respondent notes that the gTLD “.tools” is not subject to any rules as to what should be allowed to be registered, nor is it a “classification identifier”. The Respondent refers to his email communications with the geographic database provider as evidence of his legitimate interest and substantial investment in preparations to use the disputed domain name. The Respondent contends that it would be a great injustice to require the Respondent to disclose further specific proprietary project material.
The Respondent denies that he registered the disputed domain name to target the Complainants or their rights in any way and asserts that the Complainants’ allegations of bad faith are unsubstantiated. The Respondent provides a point-by-point rebuttal relative to the various past UDRP decisions cited by the Complainants.
The Respondent explains that he is an Israeli citizen living in Israel having no knowledge of the Complainants or their products before he received a copy of the Complaint. The Respondent notes that he has found no evidence of the presence of the Complainants’ TRAVELLER mark or their goods being promoted in Israel and asserts that the Complainants have no substantial online presence in that country. The Respondent provides evidence that the Complainants’ TRAVELLER mark is not registered in the Israeli Patent Office. The Respondent explains that he did not provide inaccurate or partial contact information and that he selected a domain privacy feature because he anticipated that the gTLD “.tools” would be an easy target for spammers, telephone solicitations and other online scams.
The Respondent asks the Panel to make a finding of reverse domain name hijacking (“RDNH”) against the Complainants.
The Respondent focuses on what he says are the Complainants’ unsubstantiated allegations of the Respondent’s lack of legitimate interests and of his alleged acting in bad faith, suggesting that the Complainants submitted a claim that had no reasonable prospects of success, given an inherently weak trademark. The Respondent also focuses on the Complainants’ failure to make contact with the Respondent following verification of his contact details by the Registrar and upon the Complainants’ amendment of their Complaint to direct it against the Respondent. The Respondent notes that the Complainants’ amendment to direct the Complaint against the Respondent in circumstances where the Complainants knew the Respondent was an individual based in a foreign country is evidence of the Complainants choosing to “shut their eyes” to the true facts leading to the registration of the disputed domain name, strongly suggesting bad faith filing.
Here is what the one member panel had to say:
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy, including that the disputed domain name has been registered and is being used in bad faith, will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding under the next head, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
It is well established in cases under the Policy that, for registration in bad faith to be made out, a complainant must demonstrate two elements, both on the balance of probabilities. First, the complainant must show that the respondent had or is likely to have had knowledge of the complainant’s mark when it registered the domain name concerned. While there are some cases, typically involving large scale domain name speculation, where panels have accepted a complainant’s submission that the respondent was “willfully blind” to the existence of such a mark, that is not relevant here. Secondly, the complainant must show that the respondent had bad faith intent at the point of registration of the domain name to target the complainant’s rights in such mark.
The Panel finds that there is no substantive evidence on the present record which supports the contention that the Respondent had prior knowledge of the Complainants or their TRAVELLER trademark, and/or had bad faith intent to target such trademark through his registration of the disputed domain name.
Taking the Complainants’ case at its highest, only the nature of the Registrar’s parking page coupled with the use of a proxy or privacy registration service based in the territory in which the Complainant operates and where the majority of its trademarks are in force suggests anything less than a good faith motivation.
Both of these issues are addressed to the Panel’s satisfaction in the Response. First, the links concerned are not keyed to the Complainants’ line of business and are consistent with the disputed domain name being parked pending the development of the Respondent’s software business. Secondly, the Panel is satisfied that the Respondent has provided a valid explanation for its selection of the proxy registration service and notes that the Respondent’s identity and full contact details were disclosed prior to the amendment of the Complaint
The Panel accepts that “traveller” is a dictionary word with a multiplicity of different potential good faith uses.
While the Complainants have asserted that this word has attained a secondary meaning in the minds of the relevant public, through its association with their retail operations, they have failed to provide any evidence of this or indeed of any way in which the Respondent, as a person based in a foreign country, might reasonably be expected to have known of their TRAVELLER mark, other than by way of the landing page on the Complainants’ website. T
he Complainants do not indicate that they receive or solicit international sales by way of their website and the materials supplied with the Complaint suggest to the Panel that their retail activities, whether online or offline, are focused on their domestic market.
The Respondent’s various location-based searches, covering the location of the Complainants, the location of the Complainants’ representatives and the location of the Respondent, show no evidence of any significant presence of the Complainants’ TRAVELLER mark in the online environment and add further support to the Respondent’s insistence that he had never heard of the Complainants or such mark before he registered the disputed domain name. That said, even if the Complainants could have proved such knowledge on the balance of probabilities the Respondent in this case would not fall foul of the Policy by virtue of that alone.
In other words, the Respondent’s knowledge of the existence of the Complainants’ rights in the TRAVELLER mark does not prevent the Respondent from registering and using the disputed domain name in connection with the dictionary meaning of the word “traveller” without intent to target those specific rights belonging to the Complainants.
While the Complainants have failed to provide any evidence of the Respondent’s bad faith arising from the registration and use of the disputed domain name, reasonable and credible evidence to the contrary has been brought forward by the Respondent in support of an alleged good faith intent and purpose.
The Respondent has demonstrated that he has made an investment in software development tools and is engaged in activities relating to the travel industry. The Respondent has also cited various examples of the use of the phrase “traveller tools” by others, which the Panel finds to be persuasive as to the Respondent’s contention that this is a widely used generic term in that industry.
In all of these circumstances, the Panel finds that the Complainants have failed to prove that the disputed domain name has been registered and is being used in bad faith.
On the issue of Reverse Domain Name Hijacking (RDNH)
While The Panel has some sympathies with the Respondent’s request and accepts the Respondent’s contention that it has been put to much time and trouble in the preparation of its Response. That said, mere lack of success of the Complaint is not itself sufficient for a finding of RDNH
The Panel considers that the following features of the case are relevant.
First, the disputed domain name juxtaposed the Complainants’ TRAVELLER mark with the word “tools” which is descriptive of many of the Complainants’ products.
Secondly, the associated website featured pay-per-click links over which the Respondent presumably had no control and which were not referable to the dictionary meaning of the word “traveller”, albeit that they did not target the Complainants’ mark directly.
Thirdly, the associated website featured an invitation to discuss the purchase of the disputed domain name.
Fourthly, the proxy service selected by the Respondent was based in the location where the Complainants do business, and in the territory in which their TRAVELLER mark has been registered and used for more than 40 years prior to the registration date of the disputed domain name.
While the use of such a proxy service was, as discussed earlier, entirely legitimate, the Panel can imagine how it would have appeared to the Complainants when considered along with the disputed domain name itself and the features of the associated website.
In conclusion, the Panel considers that in all of these circumstances the Complainants most probably had a reasonable apprehension that their TRAVELLER mark was being, or was about to be, targeted.
The Panel accepts the general thrust of the Respondent’s submission that at the point where the Registrar revealed the Respondent’s identity, the Complainants might and perhaps should have realized that they were not dealing with a typical cybersquatting case.
The Panel notes from the Respondent’s Annex 26 that the Respondent’s status as a software developer could have been identified from an online search. The Respondent had provided full and complete contact details to the Registrar and the Complainants would most likely not have had any difficulty reaching the Respondent had they attempted to do so. However, the Panel considers that while it was unwise of the Complainants to merely redirect the Complaint against the disclosed registrant without undertaking further investigations, particularly in a case where their mark is also a dictionary word, that action falls short of being in bad faith when the nature of the disputed domain name and of the associated website is taken into account.
In all of these circumstances, the Panel declines to make a finding of Reverse Domain Name Hijacking.