In another horrible decision, The domain name EquipmentTrader.com was just lost in UDRP, United States trademark registration for the words HEAVY EQUIPMENT TRADER. Registered January 19, 1988; and filed on June 11, 1987
The domain was registered on April 15, 1998 and is due to expire on April 14, 2017.
The one member panel of Peter L. Michaelson, found that the domain owner who was forwarding the domain name to its site at UsedIron.com “is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.”
The panelist noted that the trademark holder after the date the domain was registered obtained “United States trademark registrations that include the words EQUIPMENT TRADER however, none of the rights granted on these registrations predates the April 15, 1998 registration date of the disputed domain name and therefore called such trademark registrations “irrelevant and said they would be be ignored hereinafter”.
Here are the highlights:
“The Respondent, operates under the name Linxworks Solutions, LLC, uses the disputed domain name to divert Internet users to its own website at usediron.com through which the Respondent offers goods and services that are essentially identical to those offered by the Complainant through both its website and its “Heavy Equipment Trader” magazine.
Through an e-mail dated April 20, 2016, the Complainant wrote to the Respondent concerning the disputed domain name. By its responding e-mail dated May 3, 2016, the Respondent stated it would need an additional week to consider the matter. Since then, the Complainant received no further communication from the Respondent.
he Panel finds that the disputed domain name is confusingly similar to the Complainant’s HEAVY EQUIPMENT TRADER mark.
From a simple comparison of the disputed domain name to the Complainant’s mark HEAVY EQUIPMENT TRADER, no doubt exists that the disputed domain name is confusingly similar to it.
The name consists of the mark from which the generic word “heavy” has been deleted to yield the term “equipmenttrader” to which the generic Top-Level Domain (“gTLD”) “.com” has been appended. The addition of the gTLD is irrelevant in this case in assessing confusing similarity or identity under paragraph 4(a)(i) of the Policy and thus ignored.
Based on the evidence of record here, the Panel finds that no basis exists which would appear to legitimize a claim of rights or legitimate interests by the Respondent to the disputed domain name under paragraph 4(c) of the Policy.
This Panel finds, based on the record before it, that the Respondent, when it registered the disputed domain name, was likely well aware of the Complainant, its HEAVY EQUIPMENT TRADER Mark and the Complainant’s exclusive rights in that mark, and the reputation of and the goodwill inherent in that mark.
Yet, in spite of that knowledge, the Respondent intentionally registered the disputed domain name and uses it to redirect Internet users to its own website through which the Respondent offers essentially the same goods and services as does the Complainant through its both its own site and its HEAVY EQUIPMENT TRADER magazine.
This use, which exploits confusion of Internet viewers to divert business to the Respondent and away from the Complainant to its financial detriment, is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.
The record before the Panel is simply devoid of any evidence which proves that the Respondent actually acquired any recognition in the marketplace to become commonly known by the disputed domain name or a name similar to it. Given the exclusive trademark rights that reside in the Complainant and the reputation now inherent in its HEAVY EQUIPMENT TRADER mark both through registration and prior use, the Respondent could not legitimately acquire any public association between itself and the Complainant’s mark or even any mark similar thereto, at least for the goods and services provided by the Complainant under its mark.
Lastly, the Respondent’s use of the disputed domain name clearly does not constitute either a noncommercial or fair use under paragraph 4(c)(iii) of the Policy.
The Panel finds on balance that the Respondent’s actions, with respect to the disputed domain name, constitute bad faith registration and use.
The Panel infers, particularly from the lack of any Response, that it is likely that the Respondent was well aware of the Complainant, its reputation and its HEAVY EQUIPMENT TRADER mark and the exclusive rights which the Complainant then had in that mark when the Respondent registered the disputed domain name. Yet, in spite of that knowledge and in the absence of any authority to do so from the Complainant, the Respondent intentionally chose and registered the disputed domain name for its potential to cause confusion with that mark.
In that regard, the Respondent very likely believed that Internet users, who sought the Complainant’s website and were familiar with the Complainant’s mark would be confused, upon entering the name into their browsers, by the similarity between the name and the mark, and consequently assume that a relationship of some sort exists, possibly a sponsorship, affiliation or endorsement of the Respondent’s website by the Complainant, when, in fact, no such relationship exists at all.
To actually exploit that confusion, the Respondent deliberately uses the name to redirect Internet traffic to its own website through which it offers goods and services that are essentially identical to those currently offered by the Complainant both through its “Heavy Equipment Trader” magazine and its website. Doing so likely diverts Internet traffic away from the Complainant’s website, for which that traffic was otherwise destined, to the Respondent’s website instead and consequently deprives the Complainant of resulting business, that would have arisen from that traffic, to its ultimate financial detriment. This conduct is a clear violation of paragraph 4(b)(iv) of the Policy.
In addition, the Panel again notes that the Respondent did not submit a response in this case.
Thus, the Panel concludes that the Complainant has provided sufficient proof of its allegations, with respect to the disputed domain name, to establish a case under paragraph 4(a) of the Policy upon which the relief it now seeks can be granted.
Sole Panelist
Date: August 16, 2016
It’s b.s., but not responding is always a bad idea! What is it with these sole panelist? Based on the last few rulings, anyone could lose a good domain! IMO
We got a bit screwed on this one. Being a small business/company, and not having a legal team, it took a bit longer to get back to the complaintant’s law firm…especially since they didn’t even send the original purchase request to me directly, but instead got routed to other emails. In fact, we had an agreed upon selling price agreed to, but later the same day the WIPO decision came in and that was about it.
It is not very easy to understand how to appeal, but I did write a note to the case manager with a few of the above points.
Lessons learned….
Nik J.
Owner, Linxworks
Thanks for writing this up, Mike. Shocking that the respondent was using the EquipmentTrader.com domain to redirect to a web site offering equipment for sale.
I can’t tell whether the Complainant in the UDRP dispute (TPI Holdings) is the same as the operator of the equipmenttraderonline.com website (Dominion Enterprises). They seem to be different companies, but both list a Norfolk, VA address.
If they are the same company, then EquipmentTraderOnline.com just got a nice upgrade to EquipmentTrader.com for the cost of a UDRP filing. If they are not the same company, then by Michaelson’s reasoning presumably EquipmentTraderOnline.com should also be transferred, despite it being an operating a business on a generic domain that describes its line of business.
Hey Nat,
What’s so shocking? The owner sells used equipment. He is an “equipment trader”. It is a generic description for an equipment dealer. He should be able to forward that url to the main one. That certainly is a legitimate business use imho. Redirecting the generic traffic to his main site. Sounds good.
Some of these “arbi”traitors” are very dangerous. The fact that they can leave their brains at home and then go to “work” and put out garbage like this should leave every generic investor very concerned. People should just be forced to go to a real court to sort this nonsense out. The current system is setup so these parasites can go on fishing expeditions for valuable names.
Pinhead system and it is proven once again. Bravo Peter L. Michaelson!!! Idiot.
I was being tongue-in-cheek.
Apologies 🙂 I was still in shock from reading the article.
Exactly, my company runs valuable software tools for the heavy equipment dealers to post/syndicate their used heavy equipment across multiple sites, with our core one being usediron.com.
Having the equipmenttrader.com domain was a generic enough name that would fall into an SEO strategy to capture some targeted searches where they might find our tools valuable.
Thanks,
Nik
Owner, Linxworks
They are related companies. TPI is otherwise known as “Trader Publications Inc.”. They are the people who publish those “Auto Trader” and “Boat Trader” advertising rags that are in the metal racks at pizza shops, laundromats, and other fine business establishments where people end up waiting around with nothing else to look at. They pretty much believe they have a lock on the word “trader”.
what BS decision. deleted the word “Heavy”?? WTF?
This is nonsense if people can name their company with a generic word and then go and steal all of the prime generic domains related to it???
Of course everyone selling and trading in new and used equipment should be able to use the words “equipment and trader” in their domain name. Again if someone is that interested in naming their company with a 2nd class generic name they certainly should NOT THEN BE GIVEN the better generic name via udrp because it is showing similar items. OF COURSE IT IS SHOWING SIMILAR ITEMS. THAT IS WHAT IT DESCRIBES. ??????
crazy, crazy times.
If the respondent goes to a real court and gets a favorable decision could they then sue the udrp system and/or the arbitrator for negligence???? That may put some cold water on these crazy, inconsistent results.
With a judgement like this… the panelist should be accused of fraud. It s anything on anything. A poor verdict once again. If a company can’t buy a domain name, then , they will try with a UDRP… put a corrupted panelist and the trick is done. NO consistent in their decision. It s not even a serious or valid court of law. Those panelists are poor lawyers making some extra cash doing this kind of weekend job. So, when you have clowns and corrupted individuals… you get results like in this case. Poor.
http://www.plmadr.com/
Peter L. Michaelson
For further info, please contact the panelist
Peter L. Michaelson
e-mail: pete@plmadr.com
New York office:
590 Madison Avenue
21st Floor
New York, New York 10022 US
T: (1) 212-535-0010
New Jersey office:
15 Holly Tree Lane
Suite E
Rumson, New Jersey 07760-1950 US
T: (1) 732-758-6500
F: (1) 732-758-6501
Absolute! Worst! Decision! Ever!
Seriously, was Peter Michaelson on some sort of illegal hallucinogenic drug when he made this decision? How can a lawyer in New York or New Jersey be so incredibly STUPID? Or incredibly IGNORANT? Or both? What am I missing here? This lawyer should lose his bar license immediately. He is a menace to society and should not be allowed to practice law in either New York nor Rumson. It is my hope that Peter Michaelson’s foolhardy legal decision gets overturned and that lawyer Peter Michaelson is asked to resign from his role as an attorney to prevent similar bad decisions caused by his astoundingly flawed legal logic.
I am so embarrassed for Peter Michaelson and urge him to resign as a UDRP arbitrator.
Looks like most of his decisions where pretty obvious trademark conflicts including PeterFrampton.com
http://www.wipo.int/amc/en/domains/search/fulltext_decisions.jsp?q=Peter+L.+Michaelson
I saw Peter Frampton at a show with only about 100 people and he still killed it like it was a full stadium. Class act that Peter Frampton!!!
I can honestly say that I don’t think I have ever felt like Peter Frampton does, and I refuse to show him the way. I don’t know why he keeps asking me either of those things.
🙂
Someone could buy him a GPS. That might help him find his way?
Another crooked deal in the domain space !
Why the surprise ?
This is the domain name business after all .
One crook after another.
Ha! Are you calling New York and Rumson attorney Pete Michaelson a crook? He is a Holly Tree Lane Lawyer but it sounds to me as if he is not a very good one. Maybe New York attorneys do it that way? To me, Incredibly poor insight and judgment is probably more like it. I am having problems digesting how foolishly uneducated this decision actually is. No matter what you say of him as a New York lawyer with an office on Madison Ave., I still think attorney Pete Michaelson is a very bad and uninformed arbitrator based on this poor decision.