Comfort24-7.com, LLC v. Douglas Rio
Claim Number: FA1208001459524
Complainant is Comfort24-7.com, LLC (“Complainant”), represented by Arne M. Olson, Illinois, USA. Respondent is Douglas Rio (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <comfort24-7.co>, registered with Godaddy.com, Inc.
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 August 23, 2012; the National Arbitration Forum received payment on August 24, 2012.
On August 24, 2012, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <comfort24-7.co> 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 August 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 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@comfort24-7.co. Also on August 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 24, 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’s affiliated business offers business services related to the installation and repair of air conditioners, furnaces and indoor air quality and safety products in the Chicago area.
2. Complainant owns the COMFORT24-7 mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,518,741 registered October 21, 2008).
3.Complainant uses the COMFORT24-7 mark for “business services, namely registering, screening, credentialing, and organizing companies and skilled laborers and information concerning heating, air conditioning, indoor air quality and safety products and services for potential consumers all provided via the Internet.”
4. Respondent’s <comfort24-7.co> domain name is identical to the COMFORT24-7 mark.
5. Respondent has no rights or legitimate interests in respect of the domain name
6. Respondent is using the disputed domain name to redirect Internet users to Respondent’s directly competing <amazingairinc.com> domain name.
7. Complainant has never authorized, contracted, licensed, or otherwise permitted Respondent to use the COMFORT24-7 mark. Respondent is not commonly known by the disputed domain name.
8.Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), as Respondent is directing Internet users to its competing website and business.
9. Respondent registered and is using the disputed domain in bad faith under Policy ¶ 4(b) (iv).
10. Respondent has registered several other domain names containing the marks of third parties in a pattern of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant’s is a United States company whose affiliated business offers business services related to the installation and repair of air conditioners, furnaces and indoor air quality and safety products in the Chicago area.
2. Complainant owns the COMFORT24-7 mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,518,741 registered October 21, 2008).
3. Respondent registered the <comfort24-7.co>domain name on January 24, 2012 and is using the disputed domain name to redirect Internet users to Respondent’s directly competing <amazingairinc.com> 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) ; and Respondent has no rights or legitimate interests in respect of the domain name
(3) the domain name has been registered and is being used in bad faith.
In view of 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 draw such inferences it 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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant argues that it has rights in the COMFORT24-7 mark through its trademark registration with the USPTO (Reg. No. 3,518,741 registered October 21, 2008). The Panel finds that Complainant has submitted sufficient evidence to establish rights in the COMFORT24-7 mark under Policy ¶ 4(a) (i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a) (i).”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to the COMFORT24-7 marks, Complainant argues that Respondent’s <comfort24-7.co> domain name is identical to the COMFORT24-7 mark. The Panel notes that Respondent’s domain name contains that entire mark while only adding the country-code top-level domain (“ccTLD”) “.co.” Therefore, the Panel finds that Respondent’s disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a) (i). See Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Nat. Arb. Forum Nov. 16, 2009) (holding that even after the “addition of a ccTLD the disputed domain name is still identical to Complainant’s mark.”).
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 COMFORT24-7 trademark and to use it in its domain name ;
(b) Respondent has then used the disputed domain name to resolve to its own website at www.amazingairinc.com where he promotes his directly competing goods and services;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant asserts that it has never authorized, contracted, licensed, or otherwise permitted Respondent to use the COMFORT24-7 mark. Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant asserts that Respondent operates companies called “Amazing Air, Inc.” and “Amazing, Inc.”. The Panel notes that the WHOIS information identifies “Douglas Rio” as the domain name registrant. The Panel finds that Respondent is not commonly known by the <comfort24-7.co> domain name under Policy ¶ 4(c) (ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
(e) Complainant also argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(I) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), as Respondent is directing Internet users to Respondent’s competing website and business. Complainant notes that it, and its affiliated company, operate in the heating and cooling industry, and that Complainant’s affiliate operates in the Chicago area as does Respondent. Complainant argues that the disputed domain name redirects Internet users directly to Respondent’s competing website at <amazingairinc.com>. The Panel finds that Respondent’s directly competing use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c) (I) or a legitimate noncommercial or fair use under Policy ¶ 4(c) (iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(I) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
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 contends that Respondent has registered several other domain names containing the marks of third parties in a pattern of bad faith. Complainant argues that Respondent has utilized the “.co” ccTLD to register identical and confusingly similar domain names to direct Internet users to Respondent’s website and the Panel finds on the evidence that this is the case. The Panel finds that Complainant has elicited sufficient evidence of this practice to show that Respondent is engaged in a bad faith pattern of domain name registrations and that Respondent is attempting to prevent Complainant from reflecting its mark in a domain name pursuant to Policy ¶ 4(b) (ii). See m. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 16, 2000) (finding a bad faith pattern of conduct where the respondent registered many domain names unrelated to its business which infringe on famous marks and websites).
Secondly, Complainant argues that Respondent registered and is using the disputed domain in bad faith under Policy ¶ 4(b) (iv). Complainant argues that Respondent uses the disputed domain name to redirect Internet users to Respondent’s competing heating and cooling business. Complainant contends that Respondent profits from such use by selling its services and products. Complainant contends that the <comfort24-7.co> domain name causes Internet user confusion about the resolving website if an Internet users inadvertently forgets to type the letter “m” of the “.com” in Complainant’s <comfort24-7.com> domain name. The Panel agrees and finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b) (iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Thirdly, 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 name using the COMFORT24-7 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 <comfort24-7.co> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 25, 2012
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