Meth Lab Cleanup, LLC v. Texas Decon
Claim Number: FA1205001443888
Complainant is Meth Lab Cleanup, LLC (“Complainant”), represented by Robert H. Thornburg of Allen, Dyer, Doppelt, Milbraith & Gilchrist, P.A., Florida, USA. Respondent is Texas Decon (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <texasmethlabcleanup.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2012; the National Arbitration Forum received payment on May 15, 2012.
On May 14, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <texasmethlabcleanup.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 May 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 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@texasmethlabcleanup.com. Also on May 16, 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 June 4, 2012.
On June 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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. 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
Complainant made the following contentions.
1. Complainant has registered the METH LAB CLEAN UP LLC mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,662,398 filed September 6, 2007; registered August 4, 2009);
2. Respondent has not changed the <texasmethlabcleanup.com> domain name in such a way as to mitigate a finding of confusing similarity;
3. Respondent is a former subcontractor of Complainant’s;
4. Respondent redirects Internet users seeking to utilize the disputed domain name to Respondent’s company website at <texasdecon.com>;
5. Respondent is not commonly known by the disputed domain name;
6. Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services or as a fair use;
7. Respondent registered the disputed domain name with a primary purpose of disrupting the business of Complainant;
8. Respondent was well aware of Complainant and its registered trademarks long before the disputed domain name was registered;
9. Respondent registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent by way of Response filed a copy of Exhibit D to the Amended Complaint, being the transcript of a deposition by David Kirk Flippen, the owner of Respondent. The deposition was given on January 23, 2012.The deposition will be referred to subsequently in this decision for its content and effect.
1. Complainant is a United States company engaged in the provision of decontamination services of clandestine drug laboratories.
2. Complainant has registered the METH LAB CLEAN UP LLC mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,662,398 filed September 6, 2007; registered August 4, 2009).
3. Respondent registered the disputed domain name on January 21, 2008. It resolves to a website promoting the services of Respondent which are at least in part in competition with those of Complainant.
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.
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant has submitted that it registered the METH LAB CLEAN UP LLC mark with the USPTO (e.g., Reg. No. 3,662,398 filed September 6, 2007; registered August 4, 2009) and has provided two trademark certificates issued by the USPTO to support its submission. See Complainant’s Exhibit A. Previous panels have held that registering a mark with the USPTO confers upon the registrant defendable rights under the Policy. 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). Previous panels have also determined that a complainant’s rights in a USPTO trademark registration begin on the date that the complainant filed for such a registration. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Therefore, the Panel concludes that Complainant has established its rights in the METH LAB CLEAN UP LLC mark under Policy ¶ 4(a)(i) and that such rights attached on September 6, 2007.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s METH LAB CLEAN UP LLC mark.
Complainant claims that Respondent did not design the <texasmethlabcleanup.com> domain name in such a way as to mitigate a finding of confusing similarity with the METH LAB CLEAN UP LLC mark. The Panel notes that the disputed domain name includes the entire METH LAB CLEAN UP LLC mark, while removing the spaces between terms and the corporate identifier “LLC.” The Panel also notes that the disputed domain name adds the geographic term “texas,” along with the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel determines that the disputed domain name is confusingly similar to Complainant’s METH LAB CLEAN UP LLC mark under Policy ¶ 4(a) (i), as it finds that Respondent failed to differentiate sufficiently its domain name from Complainant’s mark. This is principally because the disputed domain name would convey to the objective internet user that it is related to the goods and services provided by Complainant under the METH LAB CLEAN UP LLC trademark when they were being provided in Texas and that when the domain name resolved to a website, the website would deal with that subject. See 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)); see also Am. Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (“Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy ¶ 4(a) (i) analysis.”); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s trademark and to use it in its domain name , adding only the word “texas” and thus enhancing the notion that the domain name relates to the activities of Complainant in Texas and hence enhancing the confusing similarity between the domain name and the trademark;
(b) Respondent has then decided to use the <texasmethlabcleanup.com> domain name to display material promoting the services of Respondent which are at least in part in competition with those of Complainant.
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant also contends that Respondent is not commonly known by the disputed domain name. Complainant states that Respondent is known as “Texas Decon, LLC.” Complainant also states that it has not given Respondent permission to use the METH LAB CLEAN UP LLC mark in anyway. The Panel notes that the WHOIS information identifies the registrant of the disputed domain name as “Texas Decon.” As a result, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
(e) Complainant also contends that Respondent is not making a bona fide offering of goods or services or a fair use of the disputed domain name. Complainant states that the disputed domain name redirects to a website located at <texasdecon.com> or otherwise displays material promoting the services of Respondent which are at least in part in competition with those of Complainant.
The Panel notes that the website <texasdecon.com> is the commercial portal for Respondent’s business online, although apparently the disputed domain name has also been used to display, at the website to which it resolves material promoting the services of Respondent. The Panel also notes that both Complainant and Respondent claim to be operating in the contamination clean up business, more precisely the decontamination of methamphetamine laboratories (“meth labs”). Therefore, the Panel finds that Respondent is redirecting Internet users to its own commercially competing website. As such, the Panel concludes that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name 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 Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel also notes that Complainant and Respondent entered into a subcontractor agreement. Complainant states and Respondent admits in its deposition that Respondent performed services for Complainant a single time under this agreement. The Panel notes that Respondent’s entire Response is in the form of a deposition provided by the owner of Respondent, Kirk Flippin, for an action involving Complainant and a third-party. The Panel finds that even though Respondent was a subcontractor of Complainant’s, Respondent, on the evidence presented, did not have the right to use Complainant’s marks in a domain name, thereby precluding a finding that Respondent used the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Associated Materials, Inc. v. Perma Well, Inc., FA 154121 (Nat. Arb. Forum May 23, 2003) (finding that, although the respondent was a distributor of the complainant’s product, the respondent did not have permission to use the complainant’s mark in its registered domain name and, therefore, was not using the domain name as a bona fide offering of goods or services or a legitimate noncommercial or fair use).
All of these matters go to make out the prima facie case against Respondent.
The obligation is thus on Respondent to rebut the prima facie case against it. Respondent has filed as its Response, Exhibit D to the Amended Complaint, an exhibit that is the transcript of a deposition by David Kirk Flippen who is the owner of Respondent. The deposition was given on January 23, 2012 in the course of litigation between the present Complainant as Plaintiff and Spaulding Decon LLC and Laura Spaulding as Defendants and other parties It appears that no other form of Response was filed. The Panel assumes that Respondent bases its case on that evidence. The Panel has examined the exhibit and finds that it does not rebut the prima facie case against Respondent. Indeed, as Complainant points out, the evidence in the exhibit shows that on December 7, 2006, which was prior to the registration of the disputed domain name, Mr. Flippen undertook a training course provided by Complainant in testing and decontamination of potential clandestine drug labs and that he provided those services through the present Respondent after he completed the course. Mr. Flippen paid for the course, traveled from San Antonio to Colorado to undertake it, was provided with training materials and then, after the training, started his business of providing the services in which he had been trained by Complainant. As his evidence was also to the effect that before he undertook the course he had not performed any testing or decontamination services of potential clandestine drug labs, Complainant would seem to be correct in submitting as it did in the Complaint that Mr. Flippen undertook this work “only” after undertaking the course of training on December 7, 2006.
Moreover, it appears from the evidence that Respondent was at some stage a subcontractor to Complainant and had signed a subcontractor’s agreement with it.
The evidence of Mr. Flippen to which no objection has been taken , which was tendered in the present proceeding by Complainant and which has been adopted by Respondent as its sole response to the allegations of Complainant, therefore does not help Respondent at all and, if anything, shows that Mr. Flippen probably constructed the disputed domain name because he had become familiar with Complainant’s trademark through the training course and decided to copy it and include it in his domain name to give the false impression that it related to the activities of Complainant when performed in Texas, which was, of course, untrue. But, whatever motivation may have been behind the registration of the domain name in the form adopted, the answer to the question whether it gives rise to a right or legitimate interest in the domain name must be answered in the negative.
It should also be recalled when considering if Respondent has rebutted the prima facie case against it, that the disputed domain name resolves to Respondent’s own website, i.e. the website of Texas Decon. Prima facie, therefore, Respondent has taken Complainant’s trademark and used it in a domain name that had the capacity to divert potential customers of Complainant in Texas and possibly other regions, away from Complainant and towards Respondent. The Panel finds that Respondent has not rebutted that prima facie conclusion.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered the disputed domain name with the purpose of disrupting its business. Complainant states that the disputed domain name redirects Internet users to Respondent’s company website at <texasdecon.com>. Complainant also states that Respondent operates in the same industry as Complainant making the two potential competitors. The Panel notes that Internet users seeking out Complainant’s services online may arrive at Respondent’s website and purchase services from Respondent rather than Complainant. Therefore, the Panel concludes that Respondent’s disputed domain name is disrupting Complainant’s business, which the Panel finds supports a finding of bad faith registration and use under Policy ¶ 4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b) (iii).”).
Second, Complainant also asserts that Respondent was well aware of Complainant’s rights in the METH LAB CLEAN UP mark prior to registering the disputed domain name. Complainant states that Respondent performed work as a sub-contractor for Complainant. Complainant also states that Respondent received meth lab cleaning training from Complainant prior to registering the disputed domain name. While Panels have declined to find bad faith based solely upon constructive knowledge, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the METH LAB CLEAN UP mark when it registered the disputed domain name and the Panel relies on that conclusion to support a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Third, the Panel notes that Complainant and Respondent entered into a subcontractor agreement. As the Panel accepts the parties' characterization of their previous relationship, the Panel concludes that their relationship is a basis for finding bad faith registration and use on the part of Respondent under Policy ¶ 4(a)(iii). See Procter & Gamble Co. v. Hlad, FA 126656 (Nat. Arb. Forum Nov. 20, 2002) (finding that the disputed domain name was registered and used in bad faith where the respondent, a distributor of the complainant’s products who was not a licensee of the complainant, used the complainant’s mark in its domain name, suggesting a broader relationship with the complainant and fostering the inference that the respondent was the creator of the complainant’s products rather than a mere distributor).
Fourth, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the METH LAB CLEAN UP mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <texasmethlabcleanup.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 15, 2012
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