Maid to Perfection Corp. v. Domain Privacy LTD
Claim Number: FA0708001055131
Complainant is Maid to Perfection Corp. (“Complainant”), represented by Kristen
M. Walsh of Nixon Peabody LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <maidtoperfection.com>, registered with Domaindiscover.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 3, 2007; the National Arbitration Forum received a hard copy of the Complaint August 6, 2007.
On August 6, 2007, Domaindiscover confirmed by e-mail to the National Arbitration Forum that the <maidtoperfection.com> domain name is registered with Domaindiscover and that Respondent is the current registrant of the name. Domaindiscover verified that Respondent is bound by the Domaindiscover registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 29, 2007, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@maidtoperfection.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 5, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. The domain name that Respondent registered, <maidtoperfection.com>, is identical to Complainant’s MAID TO PERFECTION mark.
2. Respondent has no rights to or legitimate interests in the <maidtoperfection.com> domain name.
3. Respondent registered and used the <maidtoperfection.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Maid to
Perfection Corp., has used the MAID TO PERFECTION mark since 1991 to promote
its home and office cleaning services.
Complainant holds a registered trademark with the United States Patent
and Trademark Office (“USPTO”) for the MAID TO PERFECTION mark (Reg. No.
1,687,321 issued May 12, 1992).
Complainant also registered and is using the
<maidtoperfectioncorp.com> domain name to advertise its cleaning services
online.
Respondent, Domain Privacy LTD, registered the <maidtoperfection.com> domain name November 24, 2001. Respondent is using the disputed domain name to display a list of hyperlinks and pop-up advertisements, some of which advertise the cleaning services of Complainant’s competitors.
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."
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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant successfully registered its MAID TO PERFECTION trademark with the USPTO in 1992. Under the Policy, registration of a mark with an appropriate governmental authority confers rights in that mark to a complainant. Therefore, the Panel finds that Complainant established rights to the MAID TO PERFECTION mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Mattel, Inc. v. KPF, Inc., FA 244073 (Nat. Arb. Forum Apr. 26, 2004) (“Complainant established rights in the BARBIE mark through registration with the U.S. Patent and Trademark Office (‘USPTO’).”).
The disputed domain name that Respondent registered, <maidtoperfection.com>, contains Complainant’s MAID TO PERFECTION mark in its entirety, but removes the spaces and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that these slight alterations are insignificant with respect to the Policy and the Panel finds that the disputed <maidtoperfection.com> domain name is identical to Complainant’s MAID TO PERFECTION mark pursuant to Policy ¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant alleged that Respondent does not have rights or legitimate interests in the <maidtoperfection.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). The Panel finds that Complainant established a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
However, although Respondent failed to respond to the Complaint, the Panel examines the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant alleged that Respondent is not commonly known by
the <maidtoperfection.com>
domain name. The WHOIS information
identifies Respondent as “Domain Privacy LTD,” and the Panel can find no other
evidence in the record indicating that Respondent may be commonly known by the
disputed domain name. Therefore, the
Panel concludes that Respondent is not commonly known by the <maidtoperfection.com> domain name
pursuant to Policy ¶ 4(c)(ii). See M.
Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum
Aug. 3, 2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); see also Tercent Inc. v. Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply).
The disputed domain name that Respondent registered, <maidtoperfection.com>, resolves to a webpage displaying a list of hyperlinks and pop-up advertisements, some of which advertise the cleaning services of Complainant’s competitors. The Panel infers that Respondent likely receives referral fees for each redirected Internet user. Thus, the Panel finds that this does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) and it does not qualify as a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleges that Respondent acted in bad faith in registering and using a domain name that contains in its entirety Complainant’s protected mark. Some of the links advertised on Respondent’s website that resolves from the <maidtoperfection.com> domain name advertise the cleaning services of Complainant’s competitors. This is likely to disrupt Complainant’s business. Therefore, the Panel finds that Respondent’s registration and use of the <maidtoperfection.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Svcs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because the respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
The Panel also finds that Respondent’s <maidtoperfection.com> domain name, which is identical to Complainant’s MAID TO PERFECTION mark, is likely to cause confusion among customers searching for Complainant’s cleaning services. Complainant advertises its services on its <maidtoperfectioncorp.com> domain name, but it is reasonable to assume that Internet users may believe that Complainant’s website resolves from Respondent’s <maidtoperfection.com> domain name. Therefore, customers would likely be confused as to the affiliation, endorsement, or sponsorship of the hyperlinks and corresponding services advertised on Respondent’s website. Respondent likely receives referral fees for each redirected Internet user, and is therefore attempting to profit from the goodwill associated with Complainant’s MAID TO PERFECTION mark. Therefore, the Panel finds that Respondent’s registration and use of the <maidtoperfection.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <maidtoperfection.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 19, 2007.
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