Horizon Services, Inc. v. Now Investments
Claim Number: FA0803001163702
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Having reviewed and considered the lengthy allegations put forth by each party, the Panel summarizes the most pertinent of these allegations below.
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.
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.
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.
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.
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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