The Service Master Company v. merrymaids4u.com
Claim Number: FA0208000123637
Complainant is The ServiceMaster Company, Arlington, VA (“Complainant”) represented by P. Jay Hines, of Oblon, Spivak, McClelland, Maier & Neustadt, P.C. Respondent is merrymaids4u.com, Kansas City, MO (“Respondent”).
The domain name at issue is <merrymaids4u.com>, registered with Abacus America, Inc. d/b/a Names4ever.
On October 17,2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 19, 2002; the Forum received a hard copy of the Complaint on August 20, 2002.
On September 6, 2002, Abacus America, Inc. d/b/a Names4ever confirmed by e-mail to the Forum that the domain name <merrymaids4u.com> is registered with Abacus America, Inc. d/b/a Names4ever and that Respondent is the current registrant of the name. Abacus America, Inc. d/b/a Names4ever has verified that Respondent is bound by the Abacus America, Inc. d/b/a Names4ever 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 September 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 30, 2002 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 email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
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.” 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.
The <merrymaids4u.com> domain name is confusingly similar to Complainant’s MERRY MAIDS mark.
Respondent has no rights or legitimate interests in the <merrymaids4u.com> domain name.
Respondent registered and used the <merrymaids4u.com> domain name in bad faith.
Respondent has failed to submit a Response in this proceeding.
Complainant is the owner of a registered service mark with the United States Patent and Trademark Office (“USPTO”) for the MERRY MAIDS mark (Reg. No. 1,343,329). Complainant also owns trademark and service mark registrations for the MERRY MAIDS mark in nineteen countries and the European Union.
Complainant uses the MERRY MAIDS mark in association with its commercial and residential cleaning services. The MERRY MAIDS mark was first used in 1980 in connection with the aforementioned services. Complainant’s services have grown to include franchising the MERRY MAIDS mark to residential businesses. Complainant now has over 1,200 MERRY MAIDS locations around the world.
Complainant invests a substantial amount of money in the MERRY MAIDS mark each year promoting the commercial use of the mark and maintaining the professional high quality of the services associated with the mark. Due to Complainant’s investment in the MERRY MAIDS mark and substantial use in commerce, the mark has acquired distinctiveness, fame and secondary meaning. Thus, the MERRY MAIDS mark carries a significant amount of goodwill, which is exceedingly valuable to Complainant’s business success.
Respondent registered the <merrymaids4u.com> domain name on February 4, 2002. Complainant has discovered that the domain name resolves to pornographic websites once the domain name is entered into the web-browser. The pornographic websites compensate Respondent monetarily for directing Internet traffic to them by way of the subject domain name. Complainant’s attempts to contact Respondent were unsuccessful.
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 the 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.
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 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.
Identical and/or Confusingly Similar
Complainant has demonstrated its rights in the MERRY MAIDS mark by providing proof of trademark registration with the USPTO and substantial use of the mark in commerce since 1980.
Respondent’s <merrymaids4u.com> domain name contains Complainant’s entire MERRY MAIDS mark with the suffix “4U.” There is no space in between the mark’s words in Respondent’s <merrymaids4u.com> domain name, but that is inconsequential since spaces are prohibited in domain names. Also, the mere addition of the “4U” suffix to Complainant’s MERRY MAIDS mark does not distinguish the second-level domain from the mark because of the mark’s distinctiveness. Rather, the suffix “4U” only serves to further promote Complainant’s mark and services. Therefore, Respondent’s <merrymaids4u.com> domain name is confusingly similar to Complainant’s MERRY MAIDS mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has not come forward with a Response demonstrating its rights or legitimate interests in the <merrymaids4u.com> domain name. Complainant has challenged that very issue in its Complaint, and has alleged a prima facie case. Complainant’s complete Complaint effectively shifts the burden to Respondent to articulate its rights or legitimate interests in the <merrymaids4u.com> domain name. Since Respondent has failed to demonstrate such rights or interests, the Panel may presume that Respondent lacks rights or legitimate interests in the subject domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, the Panel accepts all of Complainant’s allegations as true and will draw all reasonable inferences in favor of Complainant since Respondent has failed to come forward. See 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”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent uses the <merrymaids4u.com> domain name to resolve to multiple pornographic websites. The pornographic websites that pop-up create revenue for Respondent based on the amount of hits the websites receive. Hence, each time the domain name is entered into the web-browser Respondent profits because the pornographic websites obtain Internet traffic from the domain name. Respondent’s use of the subject domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it represent a legitimate noncommercial use pursuant to Policy ¶ 4(c)(iii). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish Complainant’s mark).
Although Complainant extensively licenses out its MERRY MAIDS mark for use in the commercial cleaning industry, Respondent is not a licensee. In addition, Complainant has not and would not ever authorize the use of its MERRY MAIDS mark in connection with pornographic material; as such a use only serves to tarnish the goodwill of the valuable MERRY MAIDS mark. Respondent’s WHOIS information has “merrymaids4u.com” listed as the contact. Respondent, however, has failed to come forward with evidence supporting the notion that it is commonly known by the <merrymaids4u.com> domain name. Therefore, Respondent has no rights or legitimate interests in the subject domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent uses the <merrymaids4u.com> domain name to trap Internet users, who search for Complainant, into a net of pornographic websites. Every hit that the pornographic websites get, as a result of Respondent’s domain name, creates a profit for Respondent. The use of Complainant’s mark with pornographic material tarnishes the mark and diminishes the goodwill Complainant has worked hard to build. The mark is tarnished because consumers are likely confused as to Complainant’s affiliation with the pornographic websites that appear from entering the confusingly similar domain name. Therefore, Respondent’s registration and use of the domain name amounts to bad faith under Policy ¶ 4(b)(iv). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby GRANTED.
Accordingly, it is Ordered that the domain name <merrymaids4u.com>, be TRANSFERRED from Respondent to Complainant.
James P. Buchele, Panelist
Dated: October 21, 2002
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