National Arbitration Forum

 

DECISION

 

Julie Mazzuca d/b/a Meth Lab Cleanup LLC v. Laura Spaulding d/b/a Spaulding Decon

Claim Number: FA1001001301289

 

PARTIES

Complainant is Julie Mazzuca d/b/a Meth Lab Cleanup LLC (“Complainant”), Idaho, USA.  Respondent is Laura Spaulding d/b/a Spaulding Decon (“Respondent”), represented by Enrico Mazzoli, of Waters Law Group, PLLC, Kentucky, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <meth-labcleanup.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.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 4, 2010.  With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.

 

On January 5, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <meth-labcleanup.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 January 13, 2010, a Written Notice of the Complaint, setting a deadline of January 8, 2010 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@meth-labcleanup.com by e-mail.

 

A timely Response was received and determined to be complete on February 2, 2010.

Respondent chose to opt-in to the electronic process with its submission and submitted its Response in electronic copy only.

 

On February 11, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant alleges that the domain name <meth-labcleanup.com> should no longer be registered with Respondent but that it should be transferred to Complainant.

 

It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is confusingly similar to Complainant’s registered service marks for METH LAB CLEANUP, Respondent has no rights or legitimate interests in the domain name and it has been registered and subsequently used in bad faith. Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to Complainant.

 

In support of its case on the first of these three elements, Complainant relies on the registered METH LAB CLEANUP  service marks to which reference has already been made (“the METH LAB CLEANUP  marks”) and says that the domain name is identical and confusingly similar to the service marks.

 

 Complainant then contends, to establish the second element, that Respondent:

 

(a)    is and has been well aware of the Complainant’s brand name and services offered and if its website;

(b)    has engaged in copyright and trademark infringement;

(c)     has plagiarized text from the Complainant’s website and used it on the Respondent’s website, to which the disputed domain name resolves;

(d)    is not commonly known by the domain name;

(e)     has been using the domain name to mislead consumers: and

(f)      has been making illegitimate use of the domain name to divert consumers from the Complainant by attempting to mislead them.

 

Finally, Complainant contends that the domain name was registered and is being used in bad faith.  It contends that this is so because Respondent:

 

(a)    has registered the disputed domain name primarily for the purpose of disrupting the business of Meth Lab Cleanup LLC;

(b)    has intentionally attempted to attract for commercial gain internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a service on the Respondent’s website or location; and

(c)    has engaged in trademark dilution , unfair competition and false advertising by registering the domain name and creating the website to which it resolves, utilizing a toll free telephone number and advertising on health department postings in mutually competitive states and transacting business in states also served by Meth Lab Cleanup LLC.

 

B. Respondent

 

Respondent submits that:

 

(a)    the registrant of the disputed domain name is Spaulding Decon, LLC.

(b)   the Complainant’s service marks are all for METH LAB CLEANUP LLC and not for METH LAB CLEANUP , as the Complainant claims;

(c)    the disputed domain name is neither identical or confusingly similar to the service marks METH LAB CLEANUP LLC, the parties respective domain names are not confusing and there is no evidence that any consumer has actually been confused;

(d)    on or about December 7, 2006 it contracted the Complainant to provide training and certification in clandestine drug lab decontamination, but it was not aware of the Complainant’s brand name, services or whether its website was properly registered or protected;

(e)    the allegations by the Complainant of copyright and trademark infringement are irrelevant to the present proceedings and in any event part of the consideration for which the Respondent paid the Complainant was a licence to use any and all of the materials and marks found on the Complainant’s website;

(f)     the registration of the domain name does not infringe any of the rights of the Complainant and no language from the Complainant’s website has been wrongfully plagiarized;

(g)    the history of the involvement of the Respondent’s web hosting provider, Go Daddy.com, are irrelevant to the present proceeding, have been used by the  Complainant to inflame the Panel and have been a frivolous and unsuccessful attempt by the Complainant to shut down the Respondent’s website resulting in damage to the Respondent;

(h)    it has a right or legitimate interest in the domain name because it registered it properly, has not intentionally mislead consumers that they are in contact with the Complainant and has been using it in accordance with the licence granted by the Complainant as part of the payment by the Respondent for the training seminar;

(i)      it has not attempted to attract customers with the intent to create confusion with the Complainant’s business;

(j)     it has not engaged in trademark dilution, unfair competition or false advertising;

(k)   the Complainant has not proved the three elements required to be proved under

Uniform Domain Name Dispute Resolution Policy (“the Policy”);

(l)      an order should not be made in these proceedings while litigation between the parties is pending in Florida.

 

FINDINGS

 

Complainant does business via Meth Lab Cleanup, LLC, a company incorporated in the State of Idaho and which is engaged in the business of training, evaluation, testing and consulting on the cleanup of hazardous and illegal drug lab sites in the United States. The Panel will use the expression “the Complainant” to mean Julie Mazzuca/dba Meth Lab Cleanup, LLC and their respective interests.

 

Respondent does business via Spaulding Decon, LLC, a company incorporated in the State of Florida and which is engaged in the business of crime scene clean up and decontamination, including the survey, testing, assessment and remediation of illegal methamphetamine drug labs in the United States. The Panel will use the expression “the Respondent” to mean Laura Spaulding/dba Spaulding Decon, LLC and their respective interests.

 

The Complainant is the registered owner of three service marks registered with the United States Patent and Trademark Office (“USPTO”) for METH LAB CLEAN UP LLC.

 

The disputed domain name <meth-labcleanup.com> was registered by the Respondent with Godaddy.com, Inc. on January 23, 2009 and the Respondent is the current registrant of that domain name.

 

Complainant is also the registrant of a domain name, namely <methlabcleanup.com> which resolves to the Complainant’s website.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that the disputed domain name is confusingly similar to the service marks relied on by the Complainant. That is so for the following reasons.

 

Complainant has provided evidence of the registration of its METH LAB CLEANUP LLC mark with the USPTO (e.g., Reg. No. 3,662,396 filed September 4, 2007; issued August 4, 2009 and two other service marks for METH LAB CLEANUP LLC, particulars of which have already been given).  Complainant’s registration of its METH LAB CLEANUP LLC marks is sufficient to establish Complainant’s rights under Policy ¶ 4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a) (i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).

 

The Respondent has contended that the domain name cannot be identical or confusingly similar to the Complainant’s service marks for they are for METH LAB CLEANUP LLC and not METH LAB CLEANUP as claimed by the Complainant.  However, although the Complainant referred to the service marks in the body of the Complaint as METH LAB CLEANUP and not METH LAB CLEANUP LLC, it annexed to the Complaint copies of the registration certificates from the USPTO and the precise terms of the service marks are clear from that evidence. That being so, the Panel finds that the mere addition of the letters “LLC” does not detract from the confusing similarity otherwise present.  Clearly an objective bystander would conclude that the domain name was reflecting the substance of the service marks, making the former confusingly similar to the latter. 

 

The Panel also finds that the relevant date of Complainant’s rights in its METH LAB CLEANUP LLC mark is the date of filing, which is a date prior to the registration of the domain name.  See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).

 

The disputed domain name also adds a hyphen and the generic top-level domain (“gTLD”) “.com” to the substance of the service mark. The Pane finds, as have many previous UDRP panels, that these alterations do not overcome a finding of confusing similarity under Policy ¶ 4(a) (i).  Accordingly, the Panel finds Respondent’s <meth-labcleanup.com> domain name is confusingly similar to Complainant’s METH LAB CLEANUP LLC marks under Policy ¶ 4(a)(i).  See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

The Panel therefore finds that the Complainant has made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

 

Under paragraph Policy ¶ 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

But by virtue of Policy ¶ 4(c), it is open to a respondent to establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:

 

(i)      before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii)     you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii)     you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Thus, if Respondent proves any of these elements or indeed anything else that shows that it has a right or interest in the disputed domain name, the Complainant will have failed to discharge its onus and the Complaint will fail.

 

It is now generally accepted that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy and then the burden shifts to the Respondent to show that it does have such rights or legitimate interests.  See 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 paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).

 

The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. That prima facie case arises from the following circumstances: the domain name incorporates the whole of the METH LAB CLEANUP LLC service mark except that the letters “LLC” have been omitted and, although the service marks were registered on August 4, 2009 and the domain name was registered prior to that date, namely on January 23, 2009, the service marks were applied for on September 4, 2007 and the Complainant had been using them since 2003.

 

That being so, the burden of proof then shifts to the Respondent to show on the balance of probabilities that it has a right or legitimate interest in the disputed domain name.

 

The Respondent seeks to do this by submitting essentially that on or about December 7, 2006 it contracted the Complainant to provide training and certification in clandestine drug lab decontamination and that part of the consideration for which the Respondent paid the Complainant for this training and certification was a licence to use any and all of the materials and marks found on the Complainant’s website. The licence is said by the Respondent to come from the fact that a few days after the training course, the Complainant wrote to the Respondent by email and apparently also to other participants in the course and said “Please use any information off our website you need.” It appears that the Complainant was giving advice to students of the course as to what they might include in their promotional brochures when they started business in the discipline in which they had just been trained. The context of the email in which this offer to take information from the Complainant’s website was made is that the Complainant recited that it could not find its own brochure, but that if the students looked at the Complainant’s website they would find “info from the safety page, the indicator page, solutions, company etc. It’s the same stuff, I just wish I had one to show you.”

 

The Respondent draws the conclusion from those words that they created a licence “to use any and all materials and marks found on Complainant’s website.” (emphasis added).The Respondent is thus submitting that the words created a licence to use everything on the website including the Complainant’s name, service marks and domain name. It is here that the Respondent’s argument meets some difficulty. In the first place, the context makes it clear that the Complainant’s offer, presumably designed to help its students, meant that they could use information on the website of a factual and technical nature to show potential customers that they were competent and qualified and to demonstrate what work was involved in cleaning up crime sites. Secondly, although the offer went as far as “company etc.”, it is drawing a long bow to conclude that the Complainant was inviting students to use the Complainant’s own company details for their, the students’, own business. When it used the expression “company, etc.” it clearly meant “your company” not “our company.”

 

The Panel therefore doubts that the email created a licence at all and is also of the view that the email was intended to be more of a personal gesture rather than a legal entitlement. If, contrary to that view, the email created a licence, the licence did not in the Panel’s view extend as far as company or related information or intellectual property and gave no right to the Respondent to use that information. It is inherently unlikely that any business in the position of the Complainant would do such a thing and the Panel would need overwhelming evidence to convince it that the Complainant would allow a student or anyone else to use its company name and service marks to create and register a domain name in direct competition with the Complainant.

 

The email and the facts surrounding it therefore gave the Respondent no right to use the Complainant’s name as a domain name.

 

The alleged licence cannot therefore give rise to a right or legitimate interest in the disputed domain name.

 

The Respondent also relies on the argument that it has a right or legitimate interest in the domain name because, taking several submissions together,  it registered the domain name properly, has not intentionally mislead consumers that they are in contact with the Complainant and has not attempted to attract customers with the intent to create confusion with the Complainant’s business.

 

Here it must be said that the UDRP process is widely accepted to be an unsatisfactory means of resolving disputed questions of fact, as they do not have the advantage of discovery, interrogatories, examination and cross examination of witnesses or any of the other means open to a Court to resolve such difficult issues. A panel must therefore be cautious about reaching firm conclusions on such issues, especially when, as in this case, there are court proceedings already pending in Florida. In such cases, panels sometimes take the view that they should not decide the questions of fact, but should leave them to the Court and that is a sensible course to take unless the panel can decide the issue on the balance of probabilities on the evidence before it.

 

In the present case, there are several disputed questions of fact and the matters for decision are certainly not free from doubt. There are, however, two features of the evidence that tilt the scales in favour of the Complainant and enable the Panel to reach a conclusion on these issues on the balance of probabilities.

 

The first is that, so far as the evidence goes, the parties came together because the Respondent enrolled in the Complainant’s course. The application form filled in and signed by the Respondent for the course is in evidence. That form carries the name of the Complainant six times and is signed by the Respondent, so there is no doubt that the name of the Complainant was brought very clearly to the Respondent’s notice. Moreover, the Respondent knew the Complainant’s email address which incorporated the domain name, for it appeared twice on the email containing the offer to use information on the website. The Panel can only conclude that the Respondent knew of the Complainant’s domain name, which was virtually the same as its company name and decided to register its own domain name as a copy of the Complainant’s, adding only a hyphen in the name. The conclusion must, on the balance of probabilities, be that the Respondent intended to copy the  Complainant’s domain name, use it for commercial purposes and to do so either knowing that this would cause confusion in at least some minds or recklessly as to whether it would or not. Those conclusions negate any claim that the Respondent has a right or legitimate interest in the domain name, for right and legitimacy cannot come from conduct of that sort.

 

The second feature that tilts the scales in favour of the Complainant is that the very terms of the domain name call for an explanation from the Respondent as to why it registered this particular domain name rather than some other form of words. Clearly, the Respondent knew that the domain name was virtually identical to the Complainant’s name, service marks and domain name and yet it went ahead and registered <meth-labcleanup.com>. Doing so raises the immediate suspicion that it was an attempt to copy the Complainant’s name, service marks and domain name and to trade on it. The absence of an explanation in the Response as to why this particular domain name was registered tends to confirm that suspicion rather than dispel it.

 

The Panel adds for completeness that there is no evidence that brings the case within any of the provisions of Policy ¶ 4(c) that might otherwise give rise to a right or legitimate interest. In that regard Complainant contends that Respondent’s previous use of the disputed domain name attempted to pass itself off as Complainant is evidence that Respondent lacks rights and legitimate interests in the disputed domain name.  Complainant alleges that Respondent’s disputed domain name previously contained copyrighted material from Complainant’s website and that Respondent’s disputed domain name was temporarily shut down by the registrar until the copyrighted material was removed from Respondent’s website.  On those matters the Panel find that Respondent’s previous attempt to pass itself off as Complainant is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c) (i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c) (iii).  See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).

 

Complainant contends that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c) (ii).  The WHOIS information indicates the registrant is “Spaulding Decon.”  The Panel finds that Respondent is not commonly known by the disputed domain name under 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 Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). 

 

Complainant also contends that Respondent is currently using the disputed domain name to divert Internet users seeking Complainant’s website to Respondent’s commercial website offering crime scene clean-up services in direct competition with Complainant.  The Panel finds Respondent’s current use of the disputed domain name is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a) (ii).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c) (i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c) (iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).

 

For all of these reasons the Panel finds that the Respondent has not rebutted the prima facie case and the Complainant has therefore made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

 

Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith:  Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000‑0003.

 

Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.  The four specified circumstances are:

 

“(i)     circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out‑of‑pocket costs directly related to the domain name; or

 

(ii)     the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii)     the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv)    by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on‑line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.”

 

The Complainant relies, to prove this element, on Policy ¶ 4(b) (iii) and (iv).

 

The Complainant contends that Respondent’s disputed domain name offers clandestine drug lab decontamination services that directly compete with Complainant. In support of this contention Complainant exhibits at attachment 6 what purports to be a page of Respondent’s principal website at <spauldingdecon.com> and on which appears a reference to <meth-labcleanup.com>, which is the website to which the disputed domain name resolves.

 

Although Respondent seems to provide a wider range of services than Complainant, the establishment of the website at <meth-labcleanup.com> offering services in competition with Complainant is likely to divert potential customers of Complainant to Respondent. There is nothing inappropriate in the competition except that it is being generated by the use of the disputed domain name which is confusingly similar to Complainant’s service marks.

 

 In the light of that evidence, the Panel finds on the balance of probabilities that Respondent’s use of the disputed domain name in this manner constitutes a disruption of Complainant’s business and is therefore evidence of bad faith registration and use within the meaning of Policy ¶ 4(b) (iii).  See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant also contends that Respondent is using the disputed domain name to attempt to attract intentionally, for commercial gain, Internet users to Respondent’s commercial website.  In the light of the conclusions already reached, the Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b) (iv).  See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).

 

Moreover, in the absence of any explanation in the Response as to why Respondent chose a domain name virtually identical to Complainant’s name, service marks and domain name, the Panel concludes that it was probably registered to give the false impression that it was associated with Complainant’s business and that it has been used for the same purpose, both of which constitute bad faith.

 

Complainant has therefore made out the third of the three elements that it must establish.

 

Other matters have been canvassed in this proceeding which, in the opinion of the Panel are not relevant to the issues arising under the UDRP in the present proceeding. The Panel expressly refrains from reaching any conclusion on those matters that are properly the province of the distinguished judicial authorities before whom other proceedings may come.

 

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 <meth-labcleanup.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist
Dated: March 1, 2010

 

 

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