Clockwork IP, LLC v. Domain Admin / Domain Registries Foundation
Claim Number: FA1904001838421
Complainant is Clockwork IP, LLC (“Complainant”), represented by Meredith Phillips of IPWatch Corporation, Alabama, USA. Respondent is Domain Admin / Domain Registries Foundation (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onehourheatingandair.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 11, 2019; the Forum received payment on April 11, 2019.
On April 12, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <onehourheatingandair.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@onehourheatingandair.com. Also on April 16, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant provides HVAC services nationwide and enjoys hundreds of franchise locations. Complainant has rights in the ONE HOUR (e.g. Reg. No. 3,033,873, registered Dec. 27, 2005) and ONE HOUR HEATING & AIR CONDITIONING (e.g. Reg. No. 4,030,339, registered Sep. 27, 2011) marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”). See Compl. Annex I. Respondent’s <onehourheatingandair.com> domain name is confusingly similar to Complainant’s marks as it incorporates the entirety of Complainant’s mark in some cases and in all cases incorporates key components of the marks.
Respondent has no rights or legitimate interests in the <onehourheatingandair.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent has never used the disputed domain name in connection with a functioning website.
Respondent registered and uses the <onehourheatingandair.com> domain name in bad faith. Respondent disrupts Complainant’s business by using the identical or confusingly similar domain name to display a parked webpage which is likely to frustrate consumers, prevent them from finding Complainant’s legitimate websites, and may ultimately harm Complainant’s goodwill and reputation. Based on the fame of Complainant’s mark, Respondent must have had actual knowledge of Complainant’s rights in the marks at the time of registration. Respondent does not make active use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides goods and services in the heating, ventilation and air conditioning industries.
2. Complainant has established its trademark rights in the ONE HOUR (e.g. Reg. No. 3,033,873, registered Dec. 27, 2005) and ONE HOUR HEATING & AIR CONDITIONING (e.g. Reg. No. 4,030,339, registered Sep. 27, 2011) marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”).
3. Respondent registered the <onehourheatingandair.com> domain name on September 4, 2006.
4. Respondent has never used the disputed domain name in connection with a functioning website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the ONE HOUR (e.g. Reg. No. 3,033,873, registered Dec. 27, 2005) and ONE HOUR HEATING & AIR CONDITIONING (e.g. Reg. No. 4,030,350, registered Sep. 27, 2011) marks based on registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the ONE HOUR and ONE HOUR HEATING & AIR CONDITIONING marks for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ONE HOUR or ONE HOUR HEATING & AIR CONDITIONING marks. Complainant argues that Respondent’s <onehourheatingandair.com> domain name is confusingly similar to Complainant’s ONE HOUR mark as it incorporates Complainant’s mark in its entirety. Respondent’s disputed domain name may be confusingly similar to the trademark as it adds the generic or descriptive words “heating and air”, being industries that are associated with Complainant and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. Similar changes in a registered mark have failed to distinguish a domain name sufficiently for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). The Panel therefore finds that the <onehourheatingandair.com> domain name is confusingly similar to the ONE HOUR mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ONE HOUR trademark and to use it in its domain name, adding the generic words “heating and air” that do not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <onehourheatingandair.com> domain name on September 4, 2006;
(c) Respondent has failed to use the domain name in connection with a legitimate and active website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interests in the <onehourheatingandair.com> domain name as Respondent is not commonly known by the disputed domain name. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The WHOIS information for the disputed domain name lists the registrant as “Domain Admin / Domain Registries Foundation” which, on its face, is unrelated to the at-issue domain name. Therefore, the Panel finds Respondent lacks rights or legitimate interest under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <onehourheatingandair.com> domain name in connection with any functional website. An inactive website can demonstrate a failure to use a disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Complainant provides historical screenshots of the resolving webpages associated with the domain name throughout Respondent’s ownership of the domain name. The majority of the screenshots show that the website displayed various links on a parked page, while others show a black webpage without any substantive content. See Compl. Annex V. As such, the Panel agrees and finds that Respondent has failed to use the domain name in connection with a legitimate and active website, failing to confer rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent disrupts Complainant’s business by using the confusingly similar domain name to resolve to a parked webpage which is likely to frustrate consumers, prevent them from finding Complainant’s legitimate websites, and may ultimately harm Complainant’s goodwill and reputation. Using a disputed domain name to resolve to an inactive webpage which may create the perception that a complainant is closed, never existed, or is not a legitimate business may be disruptive of a complainant’s business and demonstrate bad faith under Policy ¶ 4(b)(iii). See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).). The Panel notes the historical screenshots provided by Complainant, some of which show the website was used in connection with hyperlinks, and others showing its use in connection with blank webpage lacking any substantive content. See Compl. Annex V. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant argues Respondent registered and uses the <onehourheatingandair.com> domain name in bad faith because the disputed domain name resolves to a parked webpage. Failure to use a disputed domain name actively can demonstrate bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant provides screenshots of the resolving webpages of the disputed domain name at various points in time, each of which display a parked webpage either with links or without any substantive content. See Compl. Annex V. Therefore, the Panel finds evidence of bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent had knowledge of Complainant’s rights in the mark at the time of registration. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). Complainant argues that due to the fame and longstanding use of the mark, Respondent must have been aware of Complainant’s rights in the mark at the time of registration. Complainant provides a screenshot from Complainant’s own website showing the number of business locations Complainant operates and various news articles recognizing Complainant’s business. See Compl. Annexes II and III. Therefore, the Panel finds Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration, thus constituting bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ONE HOUR mark and in view of the conduct that Respondent has engaged in since registering the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <onehourheatingandair.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 9, 2019
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