Oreck Holdings, LLC v. Patrick Whiteman a/k/a Unlimited Cleaning Services
Claim Number: FA0802001143440
Complainant is Oreck Holdings, LLC (“Complainant”), represented by Kathleen
S. Ryan, of The Ollila Law Group LLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <tryoreck.com>, registered with Domainname, Inc.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 8, 2008.
On February 19, 2008, Domainname, Inc. confirmed by e-mail to the National Arbitration Forum that the <tryoreck.com> domain name is registered with Domainname, Inc. and that Respondent is the current registrant of the name. Domainname, Inc. has verified that Respondent is bound by the Domainname, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 19, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 10, 2008 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@tryoreck.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 19, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." 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. Respondent’s <tryoreck.com> domain name is confusingly similar to Complainant’s ORECK mark.
2. Respondent does not have any rights or legitimate interests in the <tryoreck.com> domain name.
3. Respondent registered and used the <tryoreck.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Oreck Holdings,
LLC, manufactures and sells vacuum cleaners, cleaning products, and air
purifiers in the
Respondent registered the <tryoreck.com> domain name on December 4, 2003. Respondent’s domain name resolves to a website that does not contain active content other than a placeholder website claiming to be the future site for the <tryoreck.com> domain name.
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 draw such inferences it 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 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.
Complainant asserts rights in the ORECK mark through registration of the mark with the USPTO. The Panel finds that Complainant has
established rights in the mark pursuant to Policy ¶ 4(a)(i). See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the
complainant had sufficiently established rights in the SKUNK WORKS mark through
its registration with the USPTO); see also Metro. Life
Ins. Co. v. Bin g Glu, FA 874496 (Nat Arb.
Forum Feb. 13, 2007) (finding rights in the METLIFE mark as a result of its
registration with the
Complainant contends that Respondent’s <tryoreck.com> domain name is confusingly similar to Complainant’s mark. Respondent’s domain name contains Complainant’s ORECK mark in its entirety and adds the generic term “try” as well as the generic top-level domain (“gTLD”) “.com.” The Panel finds that neither addition sufficiently distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant
contends that Respondent lacks any rights to or legitimate interests in the <tryoreck.com> domain name.
Where Complainant makes a prima facie case under Policy ¶ 4(a)(ii), as it has in the matter at hand, the burden shifts to
Respondent to set forth concrete evidence that it does possess rights to or
legitimate interests in the disputed domain name. See Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001) (“Proving that the Respondent has no rights or legitimate interests
in respect of the Domain Name requires the Complainant to prove a negative. For
the purposes of this sub paragraph, however, it is sufficient for the
Complainant to show a prima facie case and the burden of proof is then shifted
on to the shoulders of Respondent. In those circumstances, the common
approach is for respondents to seek to bring themselves within one of the
examples of paragraph 4(c) or put forward some other reason why they can fairly
be said to have a relevant right or legitimate interests in respect of the
domain name in question.”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has
asserted that the respondent has no rights or legitimate interests with respect
to the domain name, it is incumbent on the respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”).
Complainant
contends that the disputed domain name, <tryoreck.com>,
currently resolves to a website that contains no content. Without evidence
of demonstrable preparations to use the disputed domain name, the Panel finds
that Respondent’s use is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb.
Forum July 25, 2000) (finding that the respondent’s failure to develop the site
demonstrates a lack of legitimate interest in the domain name); See also
AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000)
(finding no rights or legitimate interests where the respondent did not provide
any documentation on the existence of its alleged company that might show what
the company’s business was, or how the company’s years of existence, if it ever
existed, might mesh with the complainant’s trademark claims).
Complainant contends that Respondent is neither commonly known by the <tryoreck.com> domain name nor authorized to register domain names featuring Complainant’s ORECK mark in any way. Absent evidence suggesting otherwise, the Panel finds that Respondent has not established rights to or legitimate interests in accordance with Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Finally,
Complainant alleges that Respondent registered and used the disputed domain
name in bad faith. The disputed domain name does not currently resolve to
an active website. Respondent presented no evidence of preparations to
use the disputed domain name. For these
reasons, the Panel finds that Respondent registered and used the disputed
domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name
without active use can constitute use in bad faith); see also Caravan Club
v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the
respondent made no use of the domain name or website that connects with the
domain name, and that such lack of use permits an inference of registration and
use in bad faith).
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 <tryoreck.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 1, 2008
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