The Complainants are Tractor Supply Co. of Texas, LP, United States of America (“United States”) and Tractor Supply Company, United States, represented by Waller Lansden Dortch & Davis, LLP, United States.
The Respondent is WhoisGuard Protected, Panama / Codee Solutions, Nigeria.
The disputed domain name <tractorsupplycompany.net> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2019. On May 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 2019, 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 Complainants on May 10, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on May 10, 2019.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on May 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 3, 2019.
The Center appointed Jane Seager as the sole panelist in this matter on June 11, 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.
The Complainants are a Texas limited partnership, Tractor Supply Co. of Texas, LP, together with its sole general partner, Tractor Supply Company, a company incorporated under the laws of the State of Delaware, United States (hereinafter collectively referred to as the “Complainant”). Since the late 1930s, the Complainant (or its predecessors in interest) has operated a retail business under the name and trademark TRACTOR SUPPLY COMPANY. Since its creation, the Complainant has expanded into a publicly-traded, USD multi-billion business with some 1,765 stores in 49 states in the United States as of December 2018. The Complainant offers a wide range of products from light bulbs and toys to lawn tractors and trailers.
For use in connection with its retail business, the Complainant is the owner of the following trademarks:
- United States Trademark Registration No. 3039473, TRACTOR SUPPLY CO., registered on January 10, 2006; and
- United States Trademark Registration No. 1846015, TSC TRACTOR SUPPLY CO. (stylized), registered on July 19, 1994.
The Complainant also owns and maintains a substantial portfolio of “tractor supply”-formative domain names, including <tractorsupply.com>, which it uses in connection with its main online retail store, as well as <tractorsupplycompany.com>, which redirects to the Complainant’s website at “www.tractorsupply.com”.
The disputed domain name was registered on March 7, 2019 using a privacy service. The disputed domain name redirects to the Complainant’s website at “www.tractorsupply.com”. The underlying registrant of the disputed domain name has been disclosed by the Registrar as being located in Nigeria. The evidence of the Complainant shows that the disputed domain name has been used to create an email address to send emails purporting to be from the Chief Financial Officer of the Complainant. Specifically, emails sent from an email address “[…]@tractorsupplycompany.net” have been sent to law firms informing such firms that a former employee involved in an employment dispute has “settled” with the Complainant, requesting the law firm to deposit a cashier’s check, then pay the “settlement”, less the legal fees to the Respondent.
The Complainant asserts both registered and common-law rights in the trademark TRACTOR SUPPLY CO. The Complainant submits that the disputed domain name is confusingly similar to its trademark as well as its domain name <tractorsupplycompany.com>.
The Complainant states that it has never granted the Respondent rights to use its trademarks. The Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Rather, the Complainant asserts that the disputed domain name is being used by the Respondent to generate revenue through a scheme calculated to mislead law firms into thinking that the Respondent is a former employee of the Complainant who is entitled to a settlement payment from the Complainant. The Complainant further asserts that there is no evidence that the disputed domain name is the actual legal name of the Respondent, or that it is commonly used to identify the Respondent without violating the Complainant’s trademark rights.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant claims that it is evident that the Respondent registered and is holding the disputed domain name to lend legitimacy to email communications fabricated to perpetrate a fraud, amounting to bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The Complainant also notes that it attempted to purchase the disputed domain name from GoDaddy.com, LLC, via which the Respondent had apparently offered the disputed domain name for sale. The Complainant asserts that the Respondent did not complete the transaction. The Complainant concludes that it is not possible to conceive of any plausible actual or contemplated use of the disputed domain name by the Respondent that would not be illegitimate.
The Respondent did not reply to the Complainant’s contentions.
The Complaint has been brought by two distinct legal entities, namely Tractor Supply Co. of Texas, LP, a Texas limited partnership, together with Tractor Supply Company, a Delaware corporation, both of the United States.
With regard to multiple complainants filing against a single respondent, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1 states:
“In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.”
The Panel notes that Tractor Supply Company acts as the sole general partner of Tractor Supply Co. of Texas, LP. The Panel further notes that the both entities hold trademark registrations comprising the words “tractor supply”. The use to which the disputed domain name has been put, as described in the factual background section above, indicates that the Respondent has engaged in conduct that has affected both entities in a similar way. In the circumstances, the Panel finds that it would be equitable and procedurally efficient to permit the consolidation.
To prevail, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
The Panel finds that the Complainant has established trademark rights in TRACTOR SUPPLY CO., as well as TSC TRACTOR SUPPLY CO. (stylized), as evidenced by the Complainant’s United States trademark registrations, details of which are set out above. The Panel also accepts that the Complainant has established common-law trademark rights in TRACTOR SUPPLY, by virtue of its longstanding use in commerce, sufficient to confer secondary meaning identifiable to the Complainant’s retail business.
The disputed domain name incorporates the Complainant’s TRACTOR SUPPLY CO. trademark in its entirety, substituting the abbreviation “Co.” for the term “company”. As such, the Complainant’s trademark is immediately recognizable in the disputed domain name. The generic Top-Level Domain “.net” may be disregarded, being a standard requirement of registration. Comparing the second-level portion of the disputed domain name with the Complainant’s trademark, the disputed domain name is confusingly similar to the Complainant’s trademark.
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
The Complainant has submitted documentary evidence that shows that the disputed domain name has been used to create an email address in an effort to impersonate the Chief Financial Officer of the Complainant in order to mislead various law firms into believing that such firms have been retained to receive severance pay from an employee pursuant to a settlement agreement with the Complainant. A sample of such an email reads as follows:
Your client [redacted] has already notified us that you have been retained to pursue his severance pay. We acknowledge that he is owed exactly $128,500 and request that you give us till the end of next week to make the payment in full. He has also instructed us to make all payments due to you, so please furnish me with details for remitting his payment to you including the name check is to be made out to just to make sure there are no errors.
We sincerely apologize for this delay
Chief Financial Officer
Tractor Supply Co”
The Complainant’s in-house counsel has deduced that a fake cashier’s check will be provided to a law firm, with instructions to deposit the check into an attorney’s account, then wire the net proceeds to the Respondent. The check being fake, the law firm will accordingly lose the money that is wired to the Respondent.
Based on the evidence put forward by the Complainant, the Panel finds that the Respondent has used the disputed domain name for the furtherance of a fraudulent email scheme with the ultimate goal of receiving payment by misleading law firms into thinking that they have been dealing with the Complainant. As noted in WIPO Overview 3.0, section 2.13:
“Panels have categorically held that the use of a domain name for illegal activity (e.g., […] phishing, […], impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”
The Respondent has not come forward to dispute the Complainant’s assertions or evidence in this regard.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
The disputed domain name incorporates the Complainant’s TRACTOR SUPPLY CO. trademark in its entirety, simply replacing the abbreviation “Co.” with the word “company”. The disputed domain name closely resembles another domain name registered by the Complainant, i.e., <tractorsupplycompany.com>, and like that domain name, the disputed domain name redirects to the Complainant’s official website at “www.tractorsupply.com”. It is clear from the use of the disputed domain name, as described above, that the Respondent had the Complainant in mind when registering the disputed domain name, and did so in order to create a likelihood of confusion as to the source of emails sent in the furtherance of the Respondent’s fraudulent scheme. The Respondent has effectively impersonated employees of the Complainant in an attempt to mislead law firms into making payment to the Respondent on the false assumption that they were dealing with the Complainant. As stated in WIPO Overview 3.0, section 3.4:
“[…] given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith. Similarly, panels have found that a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant.”
The Panel finds that the disputed domain name was registered and is being used in bad faith, and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 name <tractorsupplycompany.net> be transferred to the Complainant.
Date: June 21, 2019
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