Horizon Services, Inc. v.
Now Investments
Claim Number: FA0803001163702
PARTIES
Complainant is Horizon Services, Inc. (“Complainant”), represented by Sean
W. Dwyer, of Blank Rome LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <horizonservices.com>, registered
with Godaddy.com,
Inc.
PANEL
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.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 14, 2008; the
National Arbitration Forum received a hard copy of the Complaint on March 14, 2008.
On March 17, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <horizonservices.com> domain name is
registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, 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 March 31, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 21, 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@horizonservices.com by e-mail.
A timely Response was received and determined to be complete on April 21, 2008.
The required hard copy of the Response including the accompanying
exhibits was not received by the Forum until one day after the deadline. The Panel nonetheless has considered the
Response in its entirety.
Timely Additional Submissions were received from Complainant and
Respondent and determined to be complete on April 28, 2008, and May 5, 2008, respectively.
On April 30, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
Having reviewed and considered the lengthy allegations put forth by
each party, the Panel summarizes the most pertinent of these allegations below.
A. Complainant
Complainant, Horizon Services, Inc., is a
provider of heating, air conditioning, plumbing, and related services. Complainant is based in
Complainant asserts that as of January 2008 the disputed domain name
was registered in the name of Morvent’s One Hour Heating & Air Conditioning
of Kennett Square, Pennsylvania.
Complainant states that Morvent is a competitor of Complainant, and that
at that time Morvent was using the domain name to redirect Internet users to Morvent’s
primary website. Complainant demanded
that Morvent transfer the domain name to it, and received a reply from Marco
Giancroce of Morvent, stating that the domain name in fact belonged to Morvest,
Inc., not Morvent, and that it had been pointed to Morvent’s website as a
result of a clerical error. (Marco
Giancroce appears to be the president of both Morvent and Morvest.) Following one month of correspondence between
Complainant and Marco Giancroce, the disputed domain name was transferred into
the name of Domains by Proxy, a private registration service. Complainant contacted that service and the
new registrant of the domain name was subsequently identified as the Respondent
in this proceeding, Now Investments.
However, the same individual was listed as the administrative contact
for the domain name that had previously been listed in that capacity when the
registrant was Morvent. Complainant
alleges that the street address given in the domain registration record for Now
Investments is in fact the address of a residence in
Based inter alia upon the
aforementioned factual allegations, Complainant contends that Respondent lacks
rights or legitimate interests in respect of the disputed domain name, and that
the domain name was registered and has been used in bad faith.
B. Respondent
Respondent, Now Investments, is a business entity located in
The exhibits accompanying the Response include a copy of an agreement
between Morvest and Now Investments for the sale of the disputed domain name,
dated February 26, 2008. The agreement includes
a paragraph acknowledging disclosure of Complainant’s claims of trademark
infringement and cybersquatting, and states that the sale is made subject to
any third party claims, including those of Complainant. Also accompanying the Response is a copy of
correspondence from Enrico Giancroce to the Pennsylvania Corporation Bureau
dated April 1, 2008, changing the name of Champion Concrete to Horizon Concrete
Services.
Respondent contends that Complainant has no trademark rights in the
term HORIZON SERVICES, noting that Complainant lacks any federal trademark
registrations and that the state registrations are very recent and in any event
are not evidence of any exclusive rights, and arguing that Complainant has
offered insufficient evidence of common-law trademark rights (asserting, inter alia, that the term “Horizon” is
generic or at least descriptive).
Respondent further contends that it has rights and legitimate interests
in respect of the disputed domain name, having purchased it “in an arm’s length
transaction” at market value for a legitimate purpose, and having made
demonstrable preparations to use it for a bona
fide offering of goods and services.
Respondent challenges the allegations of bad faith registration and use
on the same grounds, and characterizes them as being targeted at a nonparty,
Morvent.
C. Additional Submissions
In its Additional Submission, Complainant responds to the arguments
made in the Response, and offers additional evidence in support of
Complainant’s allegations. Exhibit 2 to
Complainant’s Additional Submission is a declaration by an officer of
Complainant attesting to Complainant’s sales volume and advertising
expenditures relating to its claimed HORIZON SERVICES mark. Exhibit 3 is comprised of photographs
depicting Complainant’s use of the mark on trucks, exterior signage, and
advertisements.
In its Additional Submission, Respondent objects to Complainant’s
Additional Submission and replies to arguments appearing therein. Exhibit 26 to Respondent’s Additional
Submission includes an invoice for 24 Horizon Concrete Services t-shirts. The invoice is dated April 30, 2008, and the
shirts apparently were shipped on April 17, 2008.
Under Paragraph 12 of the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Panel has the
sole discretion to request or accept supplemental submissions. The Panel elects to consider Exhibits 2 and 3
to Complainant’s Additional Submission, and declines to consider the remainder
of the submission. The Panel considers Exhibit
26 to Respondent’s Additional Submission along with the remainder of the
submission to the extent that it addresses the aforementioned Exhibits 2 and 3.
FINDINGS
The Panel finds that the disputed domain name
is identical to a mark in which Complainant has rights; that Respondent lacks
rights or legitimate interests in respect of the disputed domain name; and that
the disputed domain name was registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules instructs the 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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The disputed domain name is clearly identical
to the claimed mark HORIZON SERVICES for purposes of the Policy, so the
resolution of the first issue depends upon whether Complainant has rights in
the mark. In the view of the Panel,
Complainant has met this burden with sufficient evidence of common-law
trademark rights. Contrary to Respondent’s
argument, “Horizon” is neither generic nor descriptive of the goods and
services offered by Complainant. Based
upon the extent of Complainant’s presence in its market area and the nature of
its use of its claimed mark, the Panel believes it is more likely than not that
the mark has acquired secondary meaning as an exclusive identifier of
Complainant’s goods and services. Complainant’s
trademark rights may be limited to a narrow class of goods and services and to
a particular geographic area, but they are nonetheless sufficient to serve as a
basis for a claim under the Policy. Complainant has satisfied its burden of
proving that the disputed domain name is identical to a mark in which it has
rights.
Respondent’s tale strains credulity. In the Panel’s view, any preparations that
Respondent may have made to use the domain name are likely pretextual, and in
any event occurred long after the Giancroce cousins (and the various businesses
they operate) had notice of the current dispute. See Policy
Paragraph 4(c)(i) (demonstrable preparations for bona fide use must occur prior to notice
of the dispute). Complainant has met its
burden of proving that Respondent lacks rights or legitimate interests in the
disputed domain name.
For the same reasons, the Panel rejects
Respondent’s claim that it acquired the domain name in good faith intending to
use it for a concrete business. To this
Panel it appears more likely than not that the domain name was purchased by a
direct competitor of Complainant, with the intent to use it for illegitimate
and infringing purposes; that it was in fact used for such purposes; and that any
subsequent transfer of the domain name was merely a subterfuge designed to
frustrate Complainant. The Panel
concludes that Complainant has met its burden of proving that the disputed
domain name was registered and is being used in bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that
the <horizonservices.com>
domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 6, 2008
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