American Residential Services L.L.C. v. mian ahmed
Claim Number: FA1101001368694
PARTIES
Complainant is American Residential Services L.L.C. (“Complainant”) represented by P. Jay Hines, of Cantor Colburn LLP, Tennessee, USA. Respondent is mian ahmed, (Respondent”) represented by Aylin Demirci, of INTELLECTUAL PROPERTY LAW GROUP LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rescueplumbing.us>, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 20, 2011; the Forum received a hard copy of the Complaint on January 20, 2011.
On January 21, 2011, GoDaddy.com, Inc. confirmed by e-mail to the Forum that the <rescueplumbing.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 January 28, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 2002 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 February 23, 2011, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Karl V. Fink (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 <rescueplumbing.us> domain name is confusingly similar to Complainant’s RESCUE ROOTER mark.
2. Respondent does not have any rights or legitimate interests in the <rescueplumbing.us> domain name.
3. Respondent registered and used the <rescueplumbing.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, American Residential Services L.L.C., provides residential and commercial plumbing services. Complainant uses the RESCUE ROOTER mark in connection with plumbing services, namely plumbing repair, drain cleaning, and sewer cleaning. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the RESCUE ROOTER mark (e.g., Reg. No. 1,131,000 issued February 12, 1980).
Respondent, mian ahmed, registered the <rescueplumbing.us> domain name on September 25, 2008. The disputed domain name resolves to a directory website that lists hyperlinks to third-party websites, including websites of Complainant’s competitors.
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
Complainant claims rights in the RESCUE ROOTER mark through its registrations of the mark with the USPTO (e.g., Reg. No. 1,131,000 issued February 12, 1980). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the mark pursuant to 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 [UDRP] ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant contends the <rescueplumbing.us> domain name is confusingly similar to its RESCUE ROOTER mark. Respondent omits “rooter,” the second term in Complainant’s mark, in the disputed domain name. Respondent then attaches the descriptive term “plumbing,” which describes the services that Complainant provides, and the country-code top-level domain (“ccTLD”) “.us” to Complainant’s mark. The Panel finds these alterations do not negate a finding of confusingly similar. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark). Therefore, the Panel concludes that Respondent’s <rescueplumbing.us> domain name is confusingly similar to its RESCUE ROOTER mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <rescueplumbing.us> domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <rescueplumbing.us> domain name. Therefore the Panel finds that Respondent does not have rights and 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 Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because 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)).
Complainant asserts that it has never licensed or otherwise authorized Respondent to use its RESCUE ROOTER mark. Furthermore, the WHOIS information lists “mian ahmed” as the registrant of the disputed domain name, which the Panel finds is not similar to the <rescueplumbing.us> domain name. The Panel finds that Complainant’s assertion combined with the WHOIS registrant information supports a finding that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name).
Complainant contends the disputed domain name resolves to a directory website that lists hyperlinks to third-party websites, including websites of Complainant’s competitors. Complainant submits a screen shot of the resolving website. This image shows a site that contains hyperlinks with titles “Plumbers in Your Area,” “Plumbing Contractors,” and “Plumbing Companies.” In addition, the resolving website provides hyperlinks to websites that are unrelated to Complainant. The Panel presumes that Respondent profits from its use of the disputed domain name through the receipt of pay-per-click fees. Accordingly, the Panel holds that Respondent does not use the disputed domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iv). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Registration or Use in Bad Faith
The Panel finds that the <rescueplumbing.us> domain name redirects Internet users seeking Complainant’s business to a website that provides hyperlinks to Complainant’s competitors. Accordingly, the Panel holds that Respondent’s domain name disrupts Complainant’s business, which amounts to registration and use in bad faith 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).
As previously discussed, Respondent presumably profits from its use of the disputed domain name through the receipt of pay-per-click fees. Moreover, the Panel has determined that Respondent’s <rescueplumbing.us> domain name is confusingly similar to Complainant’s RESCUE ROOTER mark. Therefore, the Panel concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Consequently, the Panel holds that this behavior provides additional evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under UDRP ¶ 4(b)(iv)); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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 <rescueplumbing.us> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 2, 2011
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