Precision Holdings of Brevard, Inc. v. Jason Grotsky
Claim Number: FA1207001455138
Complainant is Precision Holdings of Brevard, Inc. (“Complainant”), represented by George Payor, of Precision Holdings of Brevard, Inc., Florida, USA. Respondent is JASON GROTSKY (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <precisiongaragedoor.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.
Jeffrey M. Samuels, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 25, 2012; the National Arbitration Forum received payment on July 25, 2012.
On July 25, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <precisiongaragedoor.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 July 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@precisiongaragedoor.com. Also on July 27, 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 August 15, 2012.
On August 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels 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
Over the past 13 years, Complainant Precision Holdings of Brevard, Inc. (PHB) has sold more than 200 Precision Door Service franchises throughout much of the U.S. Its franchisees offer garage door installation, maintenance and repair services, retail store services, and garage doors, openers, and parts.
PHB owns a number of U.S. trademark registrations that incorporate the term PRECISION, as used in connection with the above-noted goods and services, including PRECISION OVERHEAD GARAGE DOOR SERVICE. See Complaint, Exhibits C-F. All of the marks have been in use in connection with the above services since 1999; the marks PRECISION DOOR SERVICE AND PRECISION have been in use since 1989. Complainant also owns a number of registrations for domain names that include the term “precision,” such as precisiondoor.biz, precision-garage-door.com, and precisiongaragedoorservice.com.
Complainant asserts that the disputed domain name, <precisiongaragedoor.com>, is identical or confusingly similar to, tarnishes and dilutes its various PRECISION-related marks.
Complainant further maintains that Respondent has no rights or legitimate interests with respect to the disputed domain name “as the only purpose of the domain name is to redirect traffic to a website called ripoffreport.com.” According to Complainant, ripoffreport.com is a privately owned and operated for-profit site that was first created in December 1998. The listed registrant is Xcentric Ventures, LLC, of Tempe, Arizona.
Complainant also asserts that Respondent is not now and has not been known by the name “Precision Garage Door,” or any variant thereof, nor has Respondent ever engaged in the business of offering garage door installation and related services or developed a domain name for a legitimate noncommercial or fair purpose since creation of the disputed domain name on October 22, 2005.
With respect to the issue of “bad faith” registration and use, Complainant reiterates that the disputed domain name points to the ripoffreport.com site, which, according to Complainant, “creates a strong likelihood of confusion as to the affiliation of the Respondent’s website … with the Complainant.” Complainant declares as follows:
Respondent uses the domain in dispute with the clear intention of capturing Complainant’s present as well as potential customers. This undertaking is accomplished through the use of a strong and recognized brand that – so far – has been utilized by Complainant for a period of well above 14 years. Accordingly, the registration of the domain name in dispute was, by definition, an activity carried out in bad faith by Respondent.
The redirection of traffic to the ripoffreport.com site, Complainant asserts, suggests an opportunistic bad faith “since Respondent has no connection with the products or services … provided by Precision Door Service, the nation’s leading garage door company, and its franchisees.... In light of the above, it appears that past as well as present actions of Respondent as a whole strongly signifies an on-going campaign of utilizing the name of the Complainant to increase internet traffic for commercial gain at the expense of Complainant.”
Finally, Complainant notes that its chairman, Jack Eberenz, met with a representative of ripoffreport.com to discuss the negative blogs/posts appearing on the site relating to Complainant and its franchisees. As related in Eberenz’ declaration of May 14, 2012 (see Complaint, Exhibit K), the ripoffreport.com representative told Mr. Eberenz that the representative was able to assist another company in cleaning up and removing negative posts from the site for a fee of $80,000. Complainant asserts that Mr. Eberenz took this as a back-handed attempt to extort money from Complainant in exchange for not posting negative reviews on the ripoffreport.com site.[1]
B. Respondent
Respondent, Jason Grotsky, asserts that he has operated under the assumed name of “Precision Garage Doors” in the State of New York since February 15, 1999 (see Response, Exhibit A) and has been commonly known by the disputed domain name since Respondent’s first business dealings as “Precision Lock and Tool.” See Response, Exhibit B, consisting of a Business Certificate, dated September 23, 1993, certifying that Respondent is conducting or transacting business under the name “Precision Lock and Tool.” Exhibit C to the Response consists of a filing receipt from the New York State Department of State, Division of Corporations and State Records, referencing the incorporation of Precision Lock & Door, Inc. as of October 7, 1998.
Respondent contends that he has no affiliation or connection with the ripoffreport.com site and currently operates in the business of commercial garage door installation, maintenance, repair, and garage door products.
Respondent maintains that he “had originally registered the domain name[2] primarily for the purpose of marketing and advertising his legally operated business [but has] since repurposed said domain name to differentiate his business from the negative connotation currently associated with the Precision name in his local market, a connotation derived from the complainants’ franchisee’s unethical business practices.”
The Panel finds that: (1) the disputed domain name is confusingly similar to a mark in which Complainant has rights; (2) Respondent has rights or legitimate interests in the subject domain name; and (3) the domain name was not registered and is not being used in bad faith.
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 Panel concludes that the disputed domain name, <precisiongaragedoor.com>, is confusingly similar to the PRECISION OVERHEAD GARAGE DOOR SERVICE mark. The domain name incorporates, in full, the most distinctive element of the PRECISION OVERHEAD GARAGE DOOR SERVICE mark – the term “Precision” - as well as the descriptive terms “garage” and “door.” Such differences as do exist between the marks and domain name do not, in the view of the Panel, detract from their overall similarity.
The Panel further holds that Complainant has rights in the PRECISION OVERHEAD GARAGE DOOR SERVICE mark, as evidenced by its ownership of U.S. trademark registrations for such mark, as well as its licensed use by Complainant’s franchisees.
The Panel concludes that Complainant has failed to sustain its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent contends that he is commonly known by the disputed domain name and the evidence indicates that Precision Lock & Door, Inc. operates under the assumed name of “Precision Garage Doors.” However, the Respondent in this matter is not Precision Lock & Door, Inc.; it is Jason Grotsky, It is not clear to the Panel that the named Respondent, Jason Grotsky, may be considered to be commonly known by the domain name under the Policy even though he is Respondent’s principal.
The Panel concludes that it need not resolve this issue because the evidence supports a determination that Respondent is making a legitimate noncommercial use of the domain name, without intent for commercial gain or to tarnish Complainant’s marks, within the meaning of paragraph 4(c)(iii) of the Policy.
There appears to be no dispute that the <precisiongaragedoor.com> domain name resolves to the Ripoff Report site. The evidence indicates that this site serves as a vehicle for consumers to educate consumers about their experiences, presumably mostly negative, with certain businesses, including those run by Complainant’s franchisees. Such a gripe site clearly is protected by the First Amendment.[3] Policy para 4(c)(iii). (For examples of speech protected as fair use in the United States see Ben Ladner v. Ben Wetmore, NAF 305190 (Oct. 13, 2004); TMI Inc. v. Maxwell, 368 F.3d 433 (5th Cir. 2004), (reversing transfer of trendmakerhome.com site used to criticize plaintiff’s TrendMaker Home houses); Lucas Nursery & Landscaping v. Grosse, 359 F.2d 806 (6th Cir. 2004) (refusing to order transfer of lucasnursery.com domain where it was used for legitimate criticism site and defendant showed no intent to mislead visitors or commercially profit from use of domain name); Nissan Motor Co. v. Nissan Computer Co., 378 F.3d 1002 (9th Cir. 2004) (injunctive relief denied where defendant placed links on nissan.com and nissan.net sites to other sites that post negative commentary about Nissan Motors).)
While the Ripoff Report site is privately owned and operated for-profit, the evidence indicates that the site is owned not by Respondent but by another company, Xcentric Ventures, LLC, of Tempe, Arizona. There is no evidence of any relationship between Respondent and Xcentric or that Respondent directly earns any revenue from the operation of the Ripoff Report site.
The Panel concludes that the disputed domain name was not registered and is not being used in bad faith. The evidence indicates that Respondent is not affiliated with or connected in any way with the owner of the Ripoff Report site. Thus, the contention that the site’s representative sought to extort money from Complainant, even if true, would not support a determination that Respondent acted in bad faith. The Panel finds that Respondent has not attempted to “attract, for commercial gain, Internet users to….[an]other online location…” and that neither is there likely to be confusion about the affiliation of the resolving website with Complainant’s business. See Policy para. 4(b)(iv).
Complainant has not made any contentions regarding the other bad faith factors, and based on an independent review of the evidence, the Panel finds none. Rather, the evidence indicates that Respondent operates a legitimate business under the “Precision Garage Doors” name but has chosen to use the domain name in dispute to direct internet users to a type of First Amendment-protected gripe site that generates no direct revenue for Respondent. As noted previously, this fact pattern appears unprecedented. The Panel is convinced, however, that these facts do not support a finding of bad faith registration and use.
DECISION
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <precisiongaragedoor.com> domain name REMAIN WITH Respondent.
Jeffrey M. Samuels, Panelist
Dated: September 3, 2012
[1] Mr. Eberenz’ declaration, sworn to under the penalty of perjury, does not contain any allegation regarding the claim of extortion.
[2] Respondent indicates in his Response that he has owned and operated the disputed domain name since October 2002. However, the WHOIS information shows that the disputed domain name was registered on October 22, 2005.
[3] The Panel recognizes that this case differs from other gripe site cases insofar as Respondent, itself, does not operate the gripe site; its domain name merely resolves to such site.
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