TruGreen L.P. v. Roger Smith
c/o R. Smith & Associates, LLC
Claim Number: FA1003001311720
PARTIES
Complainant is TruGreen L.P.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trugreen.us>, registered with Godaddy.com,
Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on March 4, 2010;
the Forum received a hard copy of the Complaint on March 5, 2010.
On March 8, 2010, Godaddy.com, Inc. confirmed by e-mail to the
Forum that the <trugreen.us> domain name is registered
with Godaddy.com, Inc. and that
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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the
“Policy”).
On March 11, 2010, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 31, 2010 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent in compliance
with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the
“Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On April 13, 2010, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Judge Harold
Kalina (Ret.) as Panelist.
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. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <trugreen.us> domain name is identical to Complainant’s TRUGREEN mark.
2.
Respondent does not have any rights or
legitimate interests in the <trugreen.us>
domain name.
3.
Respondent registered and used the <trugreen.us> domain name in bad
faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, TruGreen
L.P., holds multiple trademark registrations for its TRUGREEN mark with the
United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,543,094 issued February 26, 2002) in connection
with lawn, tree and shrub care services.
Respondent, Roger
Smith c/o R. Smith & Associates, LLC, registered the <trugreen.us> domain name on May 3, 2002. The disputed domain name resolves to a
website featuring links to law care related services that compete with or are
similar to those offered by Complainant.
DISCUSSION
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(f), 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 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; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical and/or Confusingly Similar
The Panel finds Complainant has established rights under Policy ¶ 4(a)(i) in the TRUGREEN mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,543,094 issued February 26, 2002). 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 [UDRP] ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant
contends Respondent’s <trugreen.us> domain name is identical to Complainant’s TRUGREEN mark. The disputed domain name contains the
entirety of Complainant’s mark and adds the country code top-level domain
(“ccTLD”) “.us.” The Panel finds that
the addition of a ccTLD is irrelevant in distinguishing between a disputed
domain name and a mark. See Lifetouch,
Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding
the respondent’s <lifetouch.us> domain name to be identical to the
complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails
to distinguish the domain name from the mark pursuant to the [usTLD] Policy”); see also Mattel, Inc.
v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name
[<Barbie.us>] is identical to the trademark “Barbie”, as it uses the
trademark in its entirety. The only difference is the addition of the country
code “us” which for this purpose is insufficient to distinguish the domain name
from the trademark.”). Therefore, the
Panel concludes Respondent’s <trugreen.us> domain name is identical to Complainant’s TRUGREEN mark pursuant to Policy
¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <trugreen.us> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when the Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <trugreen.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the <trugreen.us> domain name. The WHOIS information identifies Respondent as “Roger Smith c/o R. Smith & Associates, LLC.” Complainant asserts that Respondent is not licensed or authorized to use Complainant’s mark. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the <trugreen.us> domain name pursuant to Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent is using
the <trugreen.us>
domain name to link Internet users to
a webpage featuring links to law care
related services that compete with or are similar to those offered by
Complainant. The Panel finds that
Respondent’s use of the identical domain name to misdirect Internet users is
not a bona fide offering of goods and
services under Policy ¶ 4(c)(ii) or legitimate noncommercial or fair use of the
disputed domain name under Policy ¶ 4(c)(iv).
See Tesco
Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the
respondent was not using the <tesco-finance.com> domain name in
connection with a bona fide offering of goods or services or a
legitimate noncommercial or fair use by maintaining a web page with misleading
links to the complainant’s competitors in the financial services industry); see
also Persohn v. Lim, FA 874447 (Nat.
Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed
domain name in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair
use by redirecting Internet users to a commercial search engine website with
links to multiple websites that may be of interest to the complainant’s
customers and presumably earning “click-through fees” in the process).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Registration and Use in Bad Faith
Respondent’s <trugreen.us> domain name resolves to a website featuring links to law care related services that
compete with or are similar to those offered by Complainant. The Panel finds that Respondent’s use of the <trugreen.us> domain name
constitutes a disruption of Complainant’s business and consitutes bad faith
registration and use under Policy ¶ 4(b)(iii).
See Tesco Pers. Fin.
Ltd. v. Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under UDRP ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration
and use pursuant to UDRP ¶ 4(b)(iii) where a respondent used the disputed
domain name to operate a commercial search engine with links to the
complainant’s competitors).
The Panel presumes that Respondent profits through the receipt of click-through fees from the competing links resolving from the disputed domain name. The Panel finds Respondent’s use of this disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under UDRP ¶ 4(b)(iv)).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trugreen.us> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
April 23, 2010
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