American Residential Services L.L.C. v. Mian Ahmed
Claim Number: FA1101001368691
Complainant is American Residential Services L.L.C. (“Complainant”), represented by P. Jay Hines of Cantor Colburn LLP, Virginia, USA. Respondent is Mian Ahmed (“Respondent”), represented by Aylin Demirci of Intellectual Property Law Group LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mrrescueplumbing.com>, <mrrescue.net>, <rescuemanagement.net>, <rescueresponse.net>, <rescueresponserooter.com>, <rescueresponse.org> and <unitedrescueservices.com> registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 20, 2011; the National Arbitration Forum received payment on January 20, 2011.
On January 21, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <mrrescueplumbing.com>, <mrrescue.net>, <rescuemanagement.net>, <rescueresponse.net>, <rescueresponserooter.com>, <rescueresponse.org> and <unitedrescueservices.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
Upon request of the National Arbitration Forum, Complainant amended its Complaint on February 04, 2011, so as to list all of the Respondent’s addresses and contact information, and so as to consistently list the domain names in the header of the Complaint and the section for the disputed domain names.
On February 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@mrrescueplumbing.com, postmaster@mrrescue.net, postmaster@rescuemanagement.net, postmaster@rescueresponse.net, postmaster@rescueresponserooter.com, postmaster@rescueresponse.org and postmaster@unitedrescueservices.com. Also on February 4, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 25, 2011.
Complainant submitted a timely Additional Submission on March 1, 2011. Respondent submitted a timely Additional Submission on March 4, 2011.
On March 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol Stoner, Esq., as Panelist.
Complainant requests that the domain names <mrrescueplumbing.com>, <mrrescue.net>, <rescuemanagement.net>, <rescueresponse.net>, <rescueresponserooter.com>, <rescueresponse.org>, and <unitedrescueservices.com> be transferred from Respondent to Complainant.
A. Complainant
The Complainant, American Residential Services, ARS, is a Delaware limited liability company with its principle place of business in Tennessee. ARS was established in 1995, and is the current owner of eight Federal trademark registrations for variants of the RESCUE ROOTER mark. Registration Nos.1,787,059; 1,131,000; and 1,053,076 for the marks RESCUE ROOTER and RESCUE ROOTER & Design have acquired incontestable status under 15 U.S.C. § 1065.
ARS is the current owner of the domain name <rescuerooter.com> used to promote and advertise its plumbing, drain and sewer cleaning and repair services under the RESCUE ROOTER Marks. This domain name was registered and owned by ARS, or its predecessors in interest, since December 12, 1995. The RESCUE ROOTER Marks have been, and are continuously being used in extensive advertising and promotion. ARS spent approximately $32.0 million for the year 2010 to promote and advertise the RESCUE ROOTER plumbing services in the United States. ARS has 43 certified plumbing companies in 25 states, with millions of customers.
By virtue of over thirty years of use and the extensive advertising, promotion and sale of the RESCUE ROOTER branded plumbing and related services by ARS and its predecessors in interest, Complainant’s RESCUE ROOTER Marks are well-known and famous in the United States.
According to the WHOIS database, Respondent Mian Ahmed registered the disputed domain names between January 30, 2008 and July 6, 2010.
Complainant never licensed its marks to Respondent nor authorized Respondent to register a corresponding domain name. Complainant’s predecessor- in- interest, ServiceMaster sent Respondent, in 2004 or 2005, a cease and desist letter regarding Respondent’s use of the name Rescue Rooter of America and domain names <americanrescuerooter.com> and <unitedrescuerooter.com>. Respondent allowed these domain names to lapse, following the challenge by Complainant’s predecessor- in- interest, Servicemaster.
Respondent’s Federal trademark applications for MR. RESCUE PLUMBING & ROOTER and for MR. RESCUE PLUMBING & DRAIN CLEANING were challenged by Complainant’s Letters of Protest and subsequently abandoned.
Complainant states that it owns eight U.S. Federal trademark registrations, including three incontestable marks and thus has established rights in the RESCUE ROOTER Marks pursuant to Policy ¶4(a)(i). Complainant’s predecessor received its first trademark registration in 1976 for RESCUE ROOTER, well before Respondent’s registration of competing domain names. Complainant’s RESCUE ROOTER marks are well known and famous, in light of Complainant’s extensive advertising and promotion of marks.
The disputed domain names are confusingly similar to Complainant’s RESCUE ROOTER Marks. Despite the fame of the disputed marks, Respondent registered the seven disputed domains, with each incorporating the distinctive term “rescue.” The additions of the letters “mr” is not such a significant detail as to allow customers to distinguish Respondent’s domain name from Complainant’s registered service marks. The other slight differences in marks relate solely to descriptive or non-dominant terms or phrases. Thus, Complainant alleges that Respondent’s domain names are confusingly similar to Complainant’s trademarks and/or servicemarks.
Complainant further alleges that Respondent has no rights or legitimate interests in disputed domain names because Complainant has registered and has been using the family of marks well before Respondent registered the domain names.
Complainant alleges that two of the disputed domain names resolve to websites offering directly competing plumbing services, which usage does not constitute either a bona fide offering of goods and services or a legitimate offering of goods and services or a legitimate noncommercial or fair use of the domain name under Policy ¶4(c )(i) or (iii). The remaining disputed domain names resolve to commercial search engines providing links to various commercial websites, from which Respondent presumably receives income from its diversionary use of the domain name registrations. Such usage is also not a bona fide offering of goods and services pursuant to Policy ¶4(c )(iii).
Complainant last alleges that Respondent registered and maintains the disputed domain names in bad faith. Complainant’s basis for this belief is that Respondent had actual knowledge of Complainant’s RESCUE ROOTER marks due its prior adoption of the name “Rescue Rooter of America” and the domain names <americanrescuerooter.com> and <unitedrescuerooter.com>; and further that the disputed domain names were registered in bad faith because they resolve to web sites offering directly competitive services.
B. Respondent
Respondent alleges that Complainant does not have rights in the family of trademarks because they lack secondary meaning and because the Complainant abandoned it trademarks. The word “ROOTER” is generic for the plumbing and rooter services rendered in Complainant’s Registrations. The words “RESCUE” and “RESCUE ROOTER” are so commonly used in the plumbing industry so as to have lost their significance and function as a trademark, or a source identifier and have become generic. Generic terms are not registerable on the Principle or Supplemental Register. Furthermore, under 15 USC §1127 (Section 45 of Lanham Act) a mark is deemed abandoned “when any course of conduct of the owner, including acts of omission as well as commission cause the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark even if the owner did not intend to abandon the mark. Complainant abandoned its “RESCUE ROOTER mark for failure to police its trademark rights against the third parties listed in Respondent’s Exhibit No. 2
The domain names are not identical or confusingly similar because they do not incorporate the entire RESCUE ROOTER mark or ARS RESCUE ROOTER. Because of the need for language economy in internet transactions, consumers are alert to small differences and thus are not likely to be confused.
The words “ROOTER” and “RESCUE” are diluted and weak due to extensive third party use in plumbing and therefore only minor word variations are sufficient to create a different commercial impression.
Respondent alleges that the geographical trading area of 25 states is not substantive enough and that Complainant did not provide sales figures to support its claim that is marks are “famous.”
Respondent states that the United States Patent Office’s actions in approving marks for publication negate any finding of confusing similarity by the USPTO.
Respondent alleges that it has rights or legitimate interests in the disputed domain names.
Respondent directly, or through his family business, has been continuously using the word “rescue” since 1970, long before the domain name dispute. In 1970, his father formed a business in Kuwait which name translates to “Rescue Plumbing and Electrical Services” and a similar business in 1991 in Pakistan. In 2000, Respondent’s father assigned all his rights, interests and ownership in and to the business to Respondent. In late 2006, the Respondent moved to the US and adopted the MR.RESCUE PLUMBING & ROOTER mark and the slogan “There is a reason to call us Mr. Rescue.”
In 2009, the Respondent formed a corporation in California in the name of Rescue Response Group, Inc., which does business as Mr. Rescue Plumbing.
Respondent registered the disputed domain names before the Complainant contacted the Respondent about a dispute in February of 2010.
The Respondent alleges that he has been continuously using and advertising the RESCUE PLUMBING & ELECTRICAL SERVICES mark for plumbing, drain and sewer cleaning and repair services in Pakistan since at least 1991. The Mr. Rescue Plumbing and Drain Cleaning Services currently are offered in more than 250 locations in California and Nevada.
Respondent alleges that he has never received any economic or financial benefit from the links, advertising banner or content provided by Go Daddy or otherwise on these domain names.
Respondent alleges that he did not register and use the domain names in bad faith. Respondent had a reasonable explanation for the selection of the domain names and the marks are significantly different than the RESCUE ROOTER Registrations. Respondent never offered to sell, rent or otherwise transfer the registrations for valuable consideration.
Respondent alleges that he attempted to resolve the dispute with Complainant by inserting a disclaimer, which offer was rejected and by abandoning use of his mark MR. RESCUE PLUMBING AND ROOTER.
Respondent alleges that the first time that he heard of a dispute was in 2007 via a voice message and was not contacted again until receipt of a cease and desist letter in 2009.Thus, Respondent claims that he was unaware that the RESCUE ROOTER marks were federally registered and owned by Complainant at the time that he registered the domain names.
C. Additional Submissions
a. Complainant’s Additional Submission
Complainant alleges that there is nothing descriptive, let alone generic, about the term “rescue” in connection with plumbing services. It is suggestive, at best.
A term is only generic if it names the goods or services that it represents and is the common name for the goods or services. Usage does not convert a distinctive designation into a generic one. However, Complainant concedes that the term “rooter” is descriptive of machinery used in the plumbing business.
Respondent failed to review Declaration which averred hundreds of millions of dollars in revenue and tens of millions of dollars in advertising expenditures per year.
A trademark owner is not expected to track down and address each conflict.
Complainant did in fact provide evidence of actual confusion in Exhibit 12.
Complainant’s trademark registrations afford constructive knowledge nationwide of those rights.
Prior use outside of the United States confers no rights to designations used in the United States if the goods or services are not sold or rendered in the United States.
Respondent was not using the disputed domain names, all registered in 2008 before notice of the dispute. Respondent admits that he was contacted by a direct competitor before registration of any of the disputed domain names and advised that that party had rights in the RESCUE ROOTER mark. Thus, Respondent had actual knowledge of a directly competitive third party’s rights in a conflicting mark before proceeding to register and use the disputed domain names.
Trademark registration law prevents a claim of innocent adoption.
Complainant refused Respondent’s disclaimer offer because of its condition that Complainant withdraw its Letter of Protest to Respondent’s trademark application for Mr. Rescue Plumbing and Drain Cleaning.
Complainant’s Exhibit 14 shows creation dates of January 25, 2008 for <americanrescuerooter.com> and <unitedrescuerooter.com>.
b. Respondent’s Additional Submission
Respondent alleges that Complainant does not have rights in RESCUE ROOTER marks as Respondent submitted evidence of more than 30 businesses using the term “Rescue” for plumbing related business, and thus the term has become generic.
The Complainant has failed to prosecute its alleged trademark rights against more than 27 competitors.
Respondent states that Complainant does not cite sufficient information, such as market share, to support its allegations of fame. Complainant’s website is not highly ranked.
Respondent disputes Complainant’s instance of actual confusion regarding San Leonardo customer, as well as actual confusion as evidenced by Google search results.
Respondent alleges that it has rights in the disputed domain names as Respondent never received the cease and desist letter dated January 28, 2008 from Complainant. Notably, it was sent to address did not include apartment number of Respondent.
Respondent states that he may have been mistaken regarding date of receipt of cell phone message, but was probably received between January 2, 2008 and January 28, 2008.
Respondent believes that trademark owner and domain name owner can have concurrent rights in a mark.
Respondent alleged his out-of-country use, not to establish US trademark rights, but to establish legitimate interest and right to use domain name with term “rescue” in it.
Respondent alleges that he did not register and use the disputed domain names in bad faith. Rather, the history and reasons of his adoption and use of “rescue” in commerce was due to a family business started outside of the United States and then continued in the United States. Respondent stated that he had adopted Mr. Rescue Plumbing and Rooter mark prior to 2008 voice message.
Respondent alleges that he registered the domain names <rescueresponse.net>, <rescueresponse.org>, and <united rescue services.com> to use for the offerings of medical response and ambulance services that has nothing to do with plumbing.
1. The domain names, with the exception of <unitedrescueservices.com>, registered by Respondent are 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 names; and
3. The domain names have been registered and are being used in bad faith.
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."
Paragraph 4(a) of the Policy requires that 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.
Complainant, American Residential Services, ARS, contends that it uses the Rescue Rooter mark in connection with its residential and commercial plumbing, cleaning and repair business. Complainant asserts that it holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its RESCUE ROOTER mark (e.g., Reg. No.1,131,000 issued February 12, 1980). Previous panels have found governmental trademark registrations sufficient in establishing rights in a mark. See 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); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶4(a)(i)). Accordingly, the Panel finds Complainant has established rights in the RESCUE ROOTER mark under Policy ¶4(a)(i).
Complainant argues that Respondent’s <mrrescueplumbing.com>, <mrrescue.net>, <rescuemanagement.net>, <rescueresponse.net>, <rescueresponse.org>, <rescueresponserooter.com>, and <unitedrescueservices.com> domain names are confusingly similar to Complainant’s RESCUE ROOTER mark. The disputed domain names all contain the “RESCUE” portion of Complainant’s mark, with the addition of some generic terms and a generic top level domain. The addition of generic terms and a top level domain does not serve to adequately distinguish the disputed domain from a Complainant’s mark. Previous panels have also determined that the omission of a word from a Complainant’s mark can create confusing similarity between it and the disputed domain name. See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’ s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”); see also Red Hat, Inc. Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark); see also Wellness Int’l Network, LTD v. Apostolics.com, FA96189 (Nat. Arb. Forum, Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK).
Respondent’s arguments that Complainant’s domain names are comprised of common, generic and descriptive terms and as such, cannot be found to be confusingly similar to Complainant’s mark, are without merit, except for <unitedrescueservices.com> which will be separately discussed. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy¶4(a) (i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”)
The Panel has determined that Respondent’s parked domain name, <unitedrescueservices.com> is not identical or confusingly similar to Complainant’s RESCUE ROOTER marks. The basis for this finding is that the initial word “united “ is sufficiently distinctive as a modifier so as to lend a separate commercial impression from the RESCUE ROOTER marks. <unitedrescueservices> does not suggest a plumbing business. Respondent’s explanation that he was reserving this mark for a medical service is credible.
Therefore, this Panel finds that Respondent’s disputed domain names, with the exception of <unitedrescueservices> are confusingly similar to Complainant’s RESCUE ROOTER mark pursuant to Policy ¶4(a)(i).
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests, and then the burden shifts to Respondent to show it does have 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 first must make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a) (ii) before the burden shifts to the respondent to show it does have rights or legitimate interests in the domain name.)
Complainant contends that Respondent is neither licensed to use the disputed marks, nor is Respondent commonly known by the disputed domain name and therefore, lacks rights or legitimate interests 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 <(cigar aficionada.com> domain name under Policy¶4(c )(ii) based on the WHOIS information and other information in the record.)
Complainant offers evidence in its Exhibit 7 that Respondent is using the <mrrescueplumbing.com>and <mrresccue.net> domain names to offer its own competing goods and services. Respondent writes on its website <mrrescueplumbing.com> “There is a reason they call us Mr. RescueTM. Very few people think about which plumbing contractor to call until something unexpected happens.” Complainant argues that Respondent is likely doing this to receive a profit by trading off of the goodwill of Complainant’s RESCUE ROOTER mark. This Panel finds that such use is not a bona fide offering of goods or services under Policy ¶4 (c )(i) or a legitimate noncommercial or fair use under Policy ¶4(c ) (iii). See Trip Network Inc. v. Alviera FA 914943 (Nat. Arb. Forum, March 27, 2007) (“The Panel finds that Respondent’s operation of a website virtually identical to Complainant’s website to offer competing travel reservation services does not fall within the parameters of a bona fide offering of goods or services pursuant to Policy ¶4(c )(i) or a legitimate noncommercial fair use pursuant to Policy ¶4(c )(iii).”)
Complainant alleges that the <rescuemanagement.net>, <rescueresponse.net> ,<rescueresponserooter.com>, <rescueresponse.org> and <unitedrescueservices.com> domain names are parked and display third party click through links through which Claimant surmises that Respondent receives a click through fee. This Panel finds that such usage does not constitute a bona fide offering of goods or services under Policy ¶4(c )(i) or a legitimate noncommercial or fair use under Policy ¶4(c )(iii). See Charles Letts & Co. Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum, July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶4(c )(i)or ¶4(c )(iii).
Though Respondent argues that it does not have control over the parked websites, the Panel finds that Respondent is ultimately responsible for the content of these sites. See Vance International, Inc. v. Abend, FA970871 (Nat. Arb. Forum, June 8, 2007) (Although the websites accessed via the disputed domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent. [The] Respondent has given those service providers permission to use the disputed domains…[The] Respondent has expressly authorized the activities being carried on by the domain parking service providers, either specifically or by carte blanche. It must be presumed that [the] respondent is aware of the general nature of the services provided by those organizations and the business model that they employ. The key fact is that [the] respondent, in collaboration with the domain parking service providers, is exploiting [the] complainant’s goodwill.”)
Paragraph 4(a) of the Policy requires that Complainant must prove that the domain name has been registered and is being used in bad faith. With regards to registration in bad faith, Panel was influenced by compelling evidence in Complainant’s Additional Submission, which was not convincingly discredited by Respondent’s Additional Submission.
The relevant information in Complainant’s Additional Submission was a discussion and evidence as to the timing of Respondent’s domain name registrations.
By respondent’s own admission, he was contacted about the conflict in 2007, the same year he began use in the United States (Ahmed Decl.¶10). Thus, he was not using the Disputed Domain Names, all registered in 2008, before notice of the dispute and it is hard to accept that he was commonly known by the domain name at that time. Respondent denies having received a cease and desist letter from Complainant (Ahmed Decl. ¶10). However, the letter attached at Exhibit Tab 13 was sent by overnight courier to his then address on January 28, 2008. He would thus have received it the day before he registered <mrrescue.net>.
The import of this discussion is that Respondent received Complainant’s cease and desist letter (which advised Respondent that “By using Rescue Rooter in connection with sewer and drain cleaning services you may be infringing on our federally protected intellectual property rights”) on January 29, 2008 and registered <mr.rescue.net> on January 30, 2008.
As Complainant concluded in its Additional Submission, “Thus, Respondent has actual knowledge of a directly competitive third party’s rights in a conflicting mark before proceeding to register and use the Disputed Domain Names.”
Respondent states that it never received the cease and desist letter of January 28, 2008, offering the explanation that the letter was undeliverable without the benefit of an apartment number.
Respondent further states that the voice message left on its cell phone (sometime between January 2 and January 28, 2008) merely referred to “Rescue Rooter” and not about the use of “Rescue” or “Mr. Rescue” or “Mr. Rescue Plumbing and Rooter” or “There is a reason why they call us Mr. Rescue.” Respondent further states that it was using these marks at that point in time, and further that the voice message did not mention any domain name dispute.
Respondent’s weak and roundabout explanation does not directly deny that it had knowledge (by voice mail and letter) of a direct competitor’s rights in a conflicting mark before it registered the disputed marks commencing on January 30, 2008. The Panel thus concludes that Respondent registered the disputed domain names in bad faith, in contravention of Policy ¶4(b)(iii).
As previously discussed, the Panel is apprised, through Complainant’s Exhibit No. 7, of Respondent’s use of disputed domain names to offer a directly competing service, that is, plumbing repair and maintenance services. This Panel finds that such usage by the Respondent constitutes a disruption of Complainant’s business under Policy ¶4(b)(iii). See Dating Direct.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 contends that Respondent attempts to profit from the goodwill of Complainant’s RESCUE ROOTER mark by commercially benefitting from the confusion between the mark and the disputed domain names. Thus, Respondent’s use of the disputed domain names constitutes evidence of bad faith registration and use under Policy ¶4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum, May 25, 2006)(finding that the Respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark to attract internet traffic to the respondent’s website offering competing travel services violated Policy ¶4(b) (iv)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED for all disputed domain names, with the exception of <united rescueservices.com> for which relief shall be DENIED.
Accordingly, it is Ordered that the <mrrescueplumbing.com>, <mrrescue.net>, <rescuemanagement.net>, <rescueresponse.net>, <rescueresponserooter.com> and <rescueresponse.org> domain names be TRANSFERRED from Respondent to Complainant and that <unitedrescueservices.com> REMAIN WITH Respondent.
Carol Stoner, Esq., Panelist
Dated: March 24, 2011
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