Service Experts Heating & Air Conditioning LLC v. The Atlan Group
Claim Number: FA1205001446436
Complainant is Service Experts Heating & Air Conditioning LLC (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is The Atlan Group (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pardeeservices.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Flip Jan Clause Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 30, 2012; the National Arbitration Forum received payment on May 30, 2012.
On June 1, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <pardeeservices.com> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 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@pardeeservices.com. Also on June 4, 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 25, 2012.
On July 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Jan Claude Petillion 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.
1. Complainant uses the PARDEE SERVICE EXPERTS mark in connection with the provision of heating, ventilation and air-conditioning services.
2. Complainant has established common law rights in the PARDEE SERVICE EXPERTS mark based on its continuous and ongoing use of the mark in the Charleston, South Carolina area.
3. The disputed domain name is confusingly similar to Complainant’s PARDEE SERVICE EXPERTS mark.
4. Until recently, the disputed domain name resolved to the website of Respondent’s competing heating, ventilation, and air conditioning services company.
5. Respondent commercially benefits from the operation of its website.
6. Respondent is not commonly known by the disputed domain name and has not been authorized by Complainant to use the PARDEE SERVICE EXPERTS mark in this or any other context.
7. Respondent’s website includes text indicating that Complainant’s business has ceased operations, and that Respondent is Complainant’s predecessor in interest.
8. Respondent’s response to Complainant’s transfer demand letter indicated that Respondent was willing to sell the disputed domain name to Complainant.
9. Respondent’s correspondence with Complainant also demonstrates that Respondent had actual knowledge of Complainant’s rights in the PARDEE SERVICE EXPERTS mark.
1. The <pardeeservices.com> domain name appeared to be abandoned at the time it was registered, and Complainant was in the midst of a reorganization that cast doubt on whether it would continue to operate under the Pardee Services name.
2. Had Complainant made an offer for the disputed domain name, Respondent would have been willingly to sell the disputed domain name to Complainant for approximately $100 prior to the commencement of this action.
3. Complainant’s counsel did not act in the best interests of Complainant by commencing this action before making an offer for the purchase of the disputed domain name directly from Respondent.
4. A Panel decision transferring the disputed domain name to Complainant would somehow be “highly irresponsible” given Complainant’s failure to take “reasonable first steps” (i.e. making an offer to purchase the domain name from Respondent).
5. Respondent now proposes to sell the domain name to Complainant for $345.
C. No Additional Submissions were submitted.
Complainant holds long established common law rights in the PARDEE SERVICE EXPERTS mark.
Respondent has registered the domain name and has, once this case was initiated, offered to sell the domain name.
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.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant claims common law rights in the PARDEE SERVICE EXPERTS mark pursuant to Policy ¶ 4(a)(i). The Panel notes that Complainant has not presented evidence of its registration of the PARDEE SERVICE EXPERTS mark with a federal trademark authority. The Panel finds, however, that registration of a mark with a federal trademark authority is not necessarily a necessity for the establishment of rights in a mark under Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Rather, the Panel notes that Complainant may establish rights in the PARDEE SERVICE EXPERTS mark through a showing of common law rights and secondary meaning. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainant contends that it has used the PARDEE SERVICE EXPERTS mark in South Carolina since at least as early as May 2005. Complainant asserts that its longstanding use, advertising, and promotional activity under the mark in connection with heating, ventilation and air-conditioning services have established secondary meaning, conferring common law rights in the mark. The Panel notes that Complainant has presented evidence of various accolades Complainant’s business has received while operating under the PARDEE SERVICE EXPERTS mark, as well as local print and broadcast media featuring the mark.
The Panel finds that the PARDEE SERVICE EXPERTS mark has achieved sufficient secondary meaning to confer rights in the mark to Complainant under Policy ¶ 4(a)(i). See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
Complainant argues that the <pardeeservices.com> domain name is confusingly similar to its PARDEE SERVICE EXPERTS mark within the meaning of Policy ¶ 4(a)(i). Complainant contends that the disputed domain name contains the first two words of its PARDEE SERVICE EXPERTS mark, adding only a plural “s” to “SERVICE” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s omission of the word “experts” from Complainant’s mark as well as the space between the terms of the mark is not sufficient to render the disputed domain name distinctive from the mark. See 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). Additionally, the Panel finds that the addition of the letter “s” and the gTLD “.com” do not distinguish Complainant’s mark as well. See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)).
Accordingly, the Panel finds that the <pardeeservices.com> domain name is confusingly similar to the PARDEE SERVICE EXPERTS mark within the meaning of Policy ¶ 4(a)(i).
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 <pardeeservices.com> domain name pursuant to Policy ¶ 4(a)(ii), arguing that Respondent is not affiliated with Complainant in any way and has not been licensed by Complainant to use its mark. The Panel notes that the WHOIS information identifies Respondent as “The Atlan Group,” which the Panel finds not similar to the <pardeeservices.com> domain name. This is an indication that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). 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 Policy ¶ 4(c)(ii) does not apply). Respondent has failed to present the Panel with any evidence that it is in fact commonly known by the disputed domain name. Based on the foregoing, the Panel concludes that Respondent is not commonly known by the <pardeeservices.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant contends that Respondent is not using its <pardeeservices.com> domain name in accordance with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant contends that until recently, the disputed domain name resolved to a competing heating, ventilation, and air conditioning services company owned by Respondent. Complainant further contends that Respondent’s site contained false and misleading statements about Complainant’s business. The Panel finds that these uses constitute neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a noncommercial or fair use under Policy ¶ 4(c)(iii). See 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).
Complainant also contends that the <pardeeservices.com> domain name is currently being used to resolve to a website containing only a single paragraph, which states that Complainant is not accepting new business. The Panel finds that the disputed domain name is not currently being used in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a 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).”).
Complainant asserts that the website housed at the disputed domain name formerly contained a line stating that “Pardee Services.com is now managed by Lonzie’s Heating and Air” and “we are proudly serving the former clients of Pardee Services.” Complainant alleges that these statements were calculated to cause the public to believe that Respondent was a successor to Complainant’s business. Complainant argues that Respondent’s attempt to pass itself of as a successor in interest of Complainant’s business is also neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel agrees, finding that Respondent has attempted to pass itself off as Complainant, and that such behavior demonstrates Respondent’s lack of rights or legitimate interests in the <pardeeservices.com> domain name under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Complainant also asserts that in response to a transfer demand letter sent by Complainant, Respondent retorted that “failure to make a reasonable offer for purchase and transfer of this name will negate your efforts, and I will consider using the name to besmirch the name of Service Experts markets as well as in the Charleston area aggressively.” The Panel construes this as an offer to sell the disputed domain name, which it finds to demonstrate Respondent’s lack of rights and legitimate interests in the disputed domain name. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
Complainant contends that Respondent’s statement that “failure to make a reasonable offer for purchase and transfer of this name will negate your efforts, and I will consider using the name to besmirch the name of Service Experts markets as well as in the Charleston area aggressively” constitutes an offer to sell the <pardeeservices.com> domain name, evidencing bad faith under Policy ¶ 4(b)(i).
Complainant further contends that Respondent’s past use of its site, for the promotion of competing services, disrupts Complainant’s business and represents bad faith registration and use under Policy ¶ 4(b)(iii). The Panel finds that Respondent’s use of the website housed at the disputed domain name may cause some visitors to purchase services from Respondent’s competing business rather than Complainant, thereby exhibiting disruption of Complainant’s business in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.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 alleges that Respondent has attempted to unfairly benefit from the goodwill associated with Complainant’s PARDEE SERVICE EXPERTS mark by previously offering competing services at the confusingly similar domain name. Complainant alleges that this conduct shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv). The Panel notes that there is a high probability that users who visit the <pardeeservices.com> domain name will have intended to visit a website operated by Complainant. The Panel further notes that when these visitors are presented with information indicating that both Complainant’s business no longer exists and that Respondent is now servicing Complainant’s former customers, this creates substantial confusion. The Panel finds that Respondent’s creation of such confusion in order to realize a commercial gain through the sale of its own services constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
The Panel finds that Respondent’s use of the disputed domain name indicates that Respondent intended to give the false impression that Complainant’s operations are now being handled by Respondent, and that such conduct evidences bad faith under Policy ¶ 4(b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Finally, Complainant contends that Respondent’s correspondence with Complainant, in which Respondent makes direct reference to the business Complainant operates under the PARDEE SERVICE EXPERTS mark, demonstrates that Respondent was aware of Complainant’s mark at the time it registered the disputed domain name. The Panel finds that Respondent’s correspondence certainly indicates that Respondent was aware of Complainant’s business at the time the <pardeeservices.com> domain name was registered. The Panel further finds that Respondent’s correspondence proves Respondent had actual knowledge of Complainant’s rights in the PARDEE SERVICE EXPERTS mark at the time the disputed domain name was registered. The Panel notes that such a finding would support a finding of bad faith registration under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pardeeservices.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Jan Clause Petillion, Panelist
Dated: July 16, 2012
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