Michael Brandt Family Trust and its licensee Eco-Fresh Industries, Inc. v. Richard Symes
Claim Number: FA1109001408467
Complainant is Michael Brandt Family Trust and its licensee Eco-Fresh Industries, Inc. (“Complainant”), represented by Barth X. deRosa of Dickinson Wright, PLLC, Washington, D.C., USA. Respondent is Richard Symes (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myecofresh.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 20, 2011; the National Arbitration Forum received payment September 21, 2011.
On September 21, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <myecofresh.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 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@myecofresh.com. Also on September 27, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 21, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <myecofresh.com>, is confusingly similar to Complainant’s ECOFRESH mark.
2. Respondent has no rights to or legitimate interests in the <myecofresh.com> domain name.
3. Respondent registered and used the <myecofresh.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Michael Brandt Family Trust and its licensee Eco-Fresh Industries, Inc., was formed in 1991 to manufacture and distribute carpet deodorizers and carpet cleaning services. Complainant owns the ECOFRESH mark. Complainant holds a trademark registration for the ECOFRESH mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,763,136, registered April 6, 1993).
Respondent, Richard Symes, registered the <myecofresh.com> domain name September 23, 2007. The disputed domain name previously resolved to a website that used the ECOFRESH mark to offer environmentally friendly home cleaning services in competition with Complainant’s cleaning products. The disputed domain name currently resolves to the <clenzphilly.com> domain name that continues to offer competing cleaning services.
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."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 Complainant to 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 claims that it established rights in both the ECO-FRESH and ECOFRESH marks. Prior panels have determined that trademark registrations with trademark authorities demonstrate 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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Here, Complainant has a number of USPTO trademark registrations for its ECO-FRESH mark (Reg. No. 1,557,539, registered September 26, 1989) and ECOFRESH mark (Reg. No. 1,763,136, registered April 6, 1993).
The Panel finds that Complainant established rights in the ECO-FRESH and ECOFRESH marks through registration with a national trademark authority under Policy ¶ 4(a)(i).
Complainant also asserts that Respondent’s <myecofresh.com> domain name is confusingly similar to Complainant’s ECOFRESH mark. The disputed domain name incorporates Complainant’s entire ECOFRESH mark and changes it only by adding the generic word “my,” and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that addition of a generic word or gTLD does not avoid a finding of confusing similarity. See Wells Fargo Home Mortgage v. domains Ventures, FA 810215 (Nat. Arb. Forum Nov. 14, 2006) (finding the addition of the term “your” to the WELLS FARGO mark in the <yourwellsfargomortgage.com> domain name to be insufficient to distinguish the disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Thus, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s ECO-FRESH and ECOFRESH marks; Complainant satisfied the elements of ICANN Policy pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights or legitimate interests in the <myecofresh.com> domain name under Policy 4(a)(ii). In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the Panel found that the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.” Here, the Panel finds that Complainant made a prima facie case to support its allegations. Further, Respondent failed to submit a response to the Complaint, which can be used as evidence that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). The Panel will first look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c) before making a determination.
Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies Respondent as “richard symes,” which is not nominally similar to the disputed domain name. Moreover, Complainant states that it has not licensed or otherwise permitted Respondent to use its ECO-FRESH or ECOFRESH marks within a domain name. Therefore, the Panel holds that Respondent is not commonly known by the <myecofresh.com> domain name according to a Policy ¶ 4(c)(ii) analysis. 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 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).
Respondent’s <myecofresh.com> domain name previously sold environmentally friendly cleaning products under Complainant’s ECOFRESH mark. The disputed domain name currently redirects Internet users to Respondent’s <clenzphilly.com> domain name, which continues to offer competing cleaning products. The Panel finds that Respondent’s use of the confusingly similar disputed domain name to redirect Internet users to its own competing website or to sell competing cleaning products under Complainant’s mark, 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 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”)
The Panel finds that Respondent has no rights to or interest in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s <myecofresh.com> domain name redirects Internet users to its own website, which sells environmentally friendly cleaning products in direct competition with Complainant’s cleaning goods. Internet users intending to purchase cleaning supplies from Complainant may find Respondent’s website instead and purchase similar goods from Respondent. The Panel finds that Respondent’s registration and use of the disputed domain name disrupts Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Complainant also urges that Respondent’s <myecofresh.com> domain name creates a likelihood of confusion as to Complainant’s sponsorship of, or affiliation with, the disputed domain name and featured cleaning products. Respondent uses the confusingly similar disputed domain name to reroute Internet users to its own website, which sells products similar to those offered by Complainant. Respondent attempts to profit from the resulting Internet user’s confusion through increased sales and increased Internet traffic. The Panel holds that the registration and use of the disputed domain name demonstrates bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myecofresh.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 28, 2011.
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