CHHJ Franchising LLC d/b/a College Hunks Hauling Junk v. San Diego Hunks Hauling Junk
Claim Number: FA1204001437945
Complainant is CHHJ Franchising LLC d/b/a College Hunks Hauling Junk (“Complainant”), represented by Geoffrey C. Brethen of Musick, Peeler & Garrett, LLP, California, USA. Respondent is San Diego Hunks Hauling Junk (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sandiegohunkshaulingjunk.com>, registered with GoDaddy.com, LLC.
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.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2012; the National Arbitration Forum received payment on April 5, 2012.
On April 4, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <sandiegohunkshaulingjunk.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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”).
On April 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2012 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@sandiegohunkshaulingjunk.com. Also on April 12, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 April 30, 2012.
On May 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims that:
B. Respondent
Complainant argues that Complainant provides sorting, moving, recycling, and disposing services under its COLLEGE HUNKS HAULING JUNK mark. Complainant claims that it registered its mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,179,220 registered December 5, 2006). The Panel finds that Complainant owns rights in its COLLEGE HUNKS HAULING JUNK mark pursuant to Policy ¶ 4(a)(i). See 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.”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
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 claims that Respondent’s <sandiegohunkshaulingjunk.com> domain name is confusingly similar to Complainant’s COLLEGE HUNKS HAULING JUNK mark. Complainant argues that Respondent exchanges the term “COLLEGE” with the geographic terms “San Diego.” The Panel notes that the disputed domain name does not contain the spaces found in Complainant’s mark and does contain the generic top-level domain (“gTLD”) “.com.” The Panel finds that the removal of a term and the addition of a geographic term in general fail to adequately distinguish the disputed domain name from Complainant’s mark. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Additionally, the Panel finds that the removal of spaces and the addition of a gTLD are irrelevant to a Policy ¶ 4(a)(i) analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). In view of the above, the Panel finds that Respondent’s <sandiegohunkshaulingjunk.com> domain name is confusingly similar to Complainant’s COLLEGE HUNKS HAULING JUNK mark under Policy ¶ 4(a)(i).
While Respondent contends that the <sandiegohunkshaulingjunk.com> domain name is comprised of common and descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
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. 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the disputed domain name. Complainant argues that it is not related to Respondent and did not authorize Respondent’s use of Complainant’s mark in the disputed domain name.
However, the Panel notes that the WHOIS information for the <sandiegohunkshaulingjunk.com> domain name lists “San Diego Hunks Hauling Junk” as the registrant of the disputed domain name. The Panel finds that the WHOIS information indicates that Respondent is commonly known by the disputed domain name.
In fact, Respondent avers that it has operated under the San Diego Hunks Hauling Junk name for two years and has filed it with the San Diego County Clerks Office. Respondent claims that its company is listed in the Yellow Pages and that Respondent offers hauling services. Respondent contends that it offers legitimate services at the resolving website. The Panel finds Respondent’s claims to be true, and, therefore, the Panel finds that Respondent is using the <sandiegohunkshaulingjunk.com> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services. See INVESTools Inc v. KingWeb Inc., FA 598845 (Nat. Arb. Forum Jan. 9, 2006) (holding that the respondent’s use of the disputed domain name to operate a web directory with links to investment-related websites in competition with the complainant constituted a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i)); see also Martello v. Cockerell & Assocs., FA 346319 (Nat. Arb. Forum Dec. 13, 2004) (finding that the respondent’s use of the <skindeep.com> domain name to provide information on its demapathology services was a bona fide offering of goods or services under Policy ¶ 4(c)(i) despite the complainant’s registration of the SKIN DEEP mark with the USPTO and use of the mark in connection with similar services).
Respondent also argues that the terms of the <sandiegohunkshaulingjunk.com> domain name are common and descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. The Panel agrees with Respondent, and, therefore, the Panel finds that Respondent has established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
As the Panel has concluded that Complainant has not satisfied Policy ¶ 4(a)(ii) because Respondent has demonstrated rights or legitimate interests over the disputed domain name, the Panel declines to analyze the other element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <sandiegohunkshaulingjunk.com> domain name REMAIN WITH Respondent.
Luiz Edgard Montaury Pimenta, Panelist
Dated: May 21, 2012
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