Jack Bruner v. The BBQ Guys Ltd.
Claim Number: FA1306001506472
Complainant is Jack Bruner (“Complainant”), represented by Fred Myers of Goodmans LLP, Ontario, Canada. Respondent is The BBQ Guys Ltd. (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The disputed domain names are <welldonebbqs.com> and <welldonebbqcleaning.com>, and they are registered with WILD WEST DOMAINS, LLC.
The undersigned, Mr. David H Tatham, 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.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on June 25, 2013; the Forum received payment on June 25, 2013.
On June 28, 2013, WILD WEST DOMAINS, LLC confirmed by e-mail to the Forum that the two disputed domain names <welldonebbqs.com> and <welldonebbqcleaning.com> are registered with it and that Respondent is the current registrant of both names. WILD WEST DOMAINS, LLC has verified that Respondent is bound by its 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”) and the Rules for the Uniform Domain name Dispute Resolution Policy (“the UDRP Rules”).
On July 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 2013 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 postmasterelldonebbqs.com, as well as postmaster@welldonebbqcleaning.com. Also on July 8, 2013, 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 July 25, 2013.
Complainant filed an Additional Submission on July 30, 2013 and it was deemed to comply with the Forum’s Supplemental Rule 7.
On August 2, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mr. David H Tatham as sole Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a young man who, whilst still at University, enrolled in the Province of Ontario’s Summer Company Program. This program provides funding for budding entrepreneurs to open their own businesses provided the enrollee complies with certain conditions. He filed a comprehensive Business Plan with the Government of Ontario in May 2010 naming his business “WellDone BBQs” and at about the same time he opened a bank account under this name.
As anticipated in his Business Plan, Complainant had printed and circulated some 2000 brochures advertising his cleaning services for barbeques under the name Well Done BBQs. These brochures were distributed in several neighborhoods of Toronto, including two where Respondent operates a competitive business. Complainant also distributed a number of business cards in the name of Well Done BBQs. Both the brochures and the cards displayed only the name of the business and not that of Complainant.
Annexed to the Complaint was a copy of a reference from a Professor Katz who utilized Complainant’s services in 2010, approved of them, and subsequently referred others to Complainant.
In that first year, Complainant secured 61 customers and revenues in excess of $11,000, and the Government of Ontario, having recognized Complainant’s efforts and his compliance with its Program, rewarded him with $3,000.
On December 30, 2010, Complainant registered the domain name <welldonebbq.com>. He was unable to register the true name of his company since by that time Respondent had already registered the first of the disputed domain names <welldonebbqs.com>. Complainant contends that Respondent clearly recognized that his business operated as a barbecue cleaning service, because at the same time they registered the second of the disputed domain names <welldonebbqcleaning.com>.
Complainant contends that the phrase “Well Done BBQs” is distinctive, it is novel, it does not correspond to any common phrase and it is clear that Respondent did not register either of the two disputed domain names by happenstance. He contends that Respondent has made a purposeful attempt to interfere with his business by registering two domain names that are nearly identical to his own name and mark.
Complainant further contends that Respondent has no rights or legitimate interest in either of the disputed domain name because:
· Complainant had common law rights prior to the registration of both of the disputed domain names;
· Respondent is a competitor of Complainant, operating under the name “The BBQ Guys”. This has nothing to do with the name “Well Done BBQs” which features in both of the disputed domain names;
· Anyone visiting either of the two disputed domain names is automatically directed to Respondent’s website at <thebbqguys.com>;
· Respondent has not been known by, or acquired any rights in, the name or mark “Well Done BBQs”;
· Respondent is not making a fair use of either of the disputed domain names, but rather intends to gain commercially from them by misleadingly diverting consumers looking for Complainant’s services.
Complainant also alleges bad faith on the part of Respondent because, in his opinion, the latter has clearly registered the disputed domain names so as to prevent him from using either of them. As noted above, Complainant was able to register the domain name <welldonebbq.com> when he was unable to register the name of his company in the .com domain name. However he was able to register <welldonebbqs.ca> as well as <welldonebbq.ca> in Canada.
Complainant further contends that Respondent has engaged in a similar pattern of abusive behavior, and there were annexed to the Complaint copies of the following domain names belonging to Respondent all of them corresponding to the names of existing businesses:
<grillsmithbbqcleanimg.com> Grill Smith BBQ
<collegeprobbqcleaning.com> College Pro
<studentprobbqcleaning.com> Student Pro
In addition, there were filed copies of the following two names which had been registered by Respondent both of which are variations on Complainant’s name: <welldonebbqcleaning.com> and <welldonebbqs.com>.
A letter to Respondent from Complainant’s legal counsel eventually elicited a response from an accountant who claimed to speak on their behalf, who was disrespectful of Complainant and his efforts to establish a business, and who was dismissive of Complainant’s alleged legal rights.
Complainant concludes by contending that Respondent has demonstrated egregious bad faith, and that they have embarked on an action of attempting to interfere with their current and potential competitors.
B. Respondent
Respondent filed a short Response of five paragraphs covering less than a whole page. It contained several spelling errors and throughout referred to Complainant as “Burner” instead of “Bruner”. It contained the following information, assertions or arguments –
· They service and repair BBQs across Canada.
· They have registered a number of generic domain names for future use all elating to barbecue cleaning or repair such as the disputed domain names, as well as <barbecueservice.ca>, <collegeprocleaning.com>, <collegeprobbqcleaning.com>, and <universitybbqcleaning.com>. This last being chosen because Respondent hires 12-24 university or college students through the Summer season.
· They have also registered <thebbqguysservicenetwork.com> which they use for their nationwide promotional services
· In their opinion, the disputed domain name <welldonebbqs.com> was just another generic name which they believe the public would identify with, and relate to, the cooking of well done food. It was bought in November 2010 which is five months after Complainant had opened his business and before Respondent became aware of Complainant.
· Complainant registered his Canadian domain names in May 2010 and now, three years later, he apparently feels that he is entitled to a generic name.
· Just because a letter or a word might be missing gives no one the right to say that it is rightfully his. There are, for example, others who have registered domain names that are similar to Respondent’s own name e.g. <bbqguys.com> and <thebbqguy.com>.
· The time frame of a month, a year, or even three years “is not a way to say it’s mine.”
C. Additional Submissions
Only Complainant made an Additional Submission. In it he contends that Respondent is not in compliance with UDRP Rules 5.1(b) and in particular Rule 5.1(b)(viii). There was no documentation filed with the Response, and the factual allegations therein are therefore unattested, uncorroborated, and unreliable. Any legal submissions are unsupported by legal doctrines or correct statements of law. Consequently, the Response should be rejected and not relied upon.
Contrary to what Respondent has asserted, <welldonebbqs.com> is not generic. Neither party is selling overcooked meat. In fact Complainant provides cleaning services. He takes barbeques apart, and he scrubs them clean using his own methodology. He does not cook food to a leathery toughness, so the assertion that the disputed domain name <welldonebbqs.com> is generic for cooking well done food is irrelevant. His name is distinctive of the services which he offers.
Respondent suggests that quite by chance, and in good faith, they hit upon three domain names that include the trademarks of two competitors and a famous international franchisor. In the opinion of Complainant this is completely implausible, improbable and evidence of a pattern of misconduct.
Respondent expresses his upset that other people have apparently registered domain names that are derivatives of his own name. It would appear that he has drawn from this example the lesson that a deleted “the” or a missing “s” constitutes a license to cybersquat in bad faith. Respondent asserts that this is a sad mistake on behalf of Respondent, and their experience is no defence to the own registration of domain names that violate both the UDRP and Complainant’s rights.
Complainant is a young entrepreneur who has recently started his own business cleaning barbeques in Toronto, Canada.
Respondents, who are also based in Toronto appear to operate a similar business but have been established longer.
Paragraph 15(a) of the UDRP 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 has complained that Respondent is not in compliance with Rule 5 of the UDRP Rules, and in particular Rule 5(b)(viii). This states that any response to a Complaint shall conclude with the following Statement;
“Respondent certifies that the information contained in this Response is to the best of Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”
Complainant also objects to the fact that there were no supporting legal documents annexed to, or legal arguments in, the Response. It should therefore be rejected.
It is true that the Response was not in the normal format and did not include the above wording. As noted above, it was on a single unadorned piece of paper. However in the Panel’s experience, this is not unusual, particularly if a Respondent is not familiar with UDRP proceedings, and the Panel in this instance has accepted the Response as it stands and taken its contents into account in reaching a conclusion.
It is by now well established that, when comparing a disputed domain name with a trademark, a gTLD such as – in this case – “.com” should be disregarded. See, for example, Rollerblade, Inc, v. Chris McCrady, D2000-0429 (WIPO June 25, 2000) in which the Panel found that a top level of the domain name such as “net” or “com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the Complainant’s trademark. See also Bank of America Corporation v. Bill McCall, FA 135012 (NAF December 31, 2002) holding that attaching a gTLD to a domain name is “unable to create a distinction capable of overcoming a finding of confusing similarity”.
Thus in this case, the comparison is between WELLDONEBBQS and WELLDONEBBQCLEANING on the one hand and, on the other, the trademark in which Complainant claims to have rights, namely WELL DONE BBQS. The first of the disputed names <welldonebbqs.com> is identical to this mark. The second name is <welldonebbqcleaning.com> and this contains Complainant’s claimed trademark less the final letter ‘S’ and plus the word ‘cleaning’ which accurately describes the business in which Complainant is engaged. It is well established through a host of Decisions under the Policy that if a domain name is merely the combination of a common word and a Complainant’s trademark, this is sufficient for a finding that it is confusingly similar to that trademark. See, for example, the following Decisions –
V Secret Catalogue, Inc. v. Wig Distributions, FA301727 (Nat. Arb. Forum Sept. 7, 2004) – VICTORIA’S SECRET v. <victoriassecrethair.cm>,
Allianz of America Corporation v. Lane Bond FA680624 (Nat. Arb. Forum June 2, 2006) - ALLIANZ v. <allianzfinance.com>
The Gillette Co. v. RFK Associates FA492867 (Nat. Arb. Forum July 28, 2005) –
DURACELL v. <duracellbatteries.com>
Ford Motor Company v. PrivacyProtect.org/Domain Admin FA1418588 (Nat. Arb. Forum Feb. 1, 2012) – FORD v. <fordprotect.com>.
It is also well established that the Policy does not require a Complainant to have a registered trademark, just one in which he has prior rights. So the first question to be resolved here is whether Complainant does indeed have such rights in the name “Well Done BBQs”. As proof thereof, Complainant filed the following documents –
· A copy of a Business Plan which he submitted to the Government of Ontario in May 2010. This refers to his proposed new start-up business under the name “Well Done BBQs”.
· A copy of a Bank Statement for Well Done BBQs. This is dated May 1-31, 2010 and shows a closing balance of $1001.32.
· Copies of a flyer and a business card both prominently displaying the name WELL DONE BBQs which, Complainant claims, were widely distributed in the Summer of 2010 in several Toronto neighbourhoods. However neither is dated.
· A letter, dated June 21, 2013 from a professor J D Katz who relates how, in the Summer of 2010, he saw a lawn sign advertising Well Done BBQs, how he used the company’s services to have his own barbeque cleaned, and how he was so impressed that he recommended the firm to several other potential customers.
In the Panel’s view this is sufficient for it to decide that Complainant does indeed have rights in the name WELL DONE BBQs. These rights date from at least May 2010, which is prior to the registration of the two disputed domain names on November 17, 2010. Since one of the disputed domain names is identical to Complainant’s name while the other is confusingly similar, the Panel finds that paragraph 4(a)(i) of the Policy has been successfully proved in both cases.
It is well established that the burden for proving that a Respondent has no rights or legitimate interests in a disputed domain name rests with a Complainant. However this puts him in the almost impossible position of proving a negative. So it is customary, when a Complainant has made out a prima facie case that a Respondent lacks rights and legitimate interests in a disputed domain name, for the burden to shift to Respondent to show that it does have rights or legitimate interests. See, for example, both Hanna-Barbera Productions., Inc. v. Entertainment Commentaries, FA 741828 (NAF August 18, 2006), and AOL LLC v. Jordan Gerberg, FA 780200 (NAF September 25, 2006).
In this case, the Panel believes that Complainant has made out a prima facie case and so the burden to prove that they do have rights and a legitimate interest in both of the disputed domain names falls upon Respondent. This they have signally failed to do.
According to paragraph 4(c) the Policy, a Respondent can demonstrate that he has rights or a legitimate interest in a disputed domain name in one of three ways:
(i) That before any notice of the dispute, he has used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
(ii) That he has been commonly known by the trademark even if he has acquired no trademark or service mark rights in it;
(iii) That he is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
Respondent is in the same business as Complainant, namely the cleaning and servicing of barbeques, they both operate in the same town (Toronto), and they are both therefore competitors. Possibly seeing, in Complainant, a rival and realizing that Complainant had failed to register his name as a “.com” domain name, Respondent decided to register two domain names that incorporated that rival’s name and then, adding insult to injury, they ensured that anyone accessing either name would be directed to their own website.
In the opinion of the Panel, Respondent’s reasoning for his adoption of the names – that they simply referred to the cooking of food that is well cooked – is specious, and their reference to other domain names that, if they had not omitted letters or words, would have been identical to the names of existing companies, is hardly persuasive.
It was said, for example, in Victoria’s Secret v. Zuccarini, FA 95762 (NAF November 18, 2000) that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks. Also, in Google Inc. v. DktBot.org FA 186993 (NAF August 4, 2004) it was said that the mere addition of a single letter to a complainant’s mark does not remove the respondent’s domain names from the realm of confusingly similarity in relation to the complainant’s mark1334458 (NAF August 24 2010). Both of these Decisions were quoted with approval in W.W. Grainger, Inc, v. Above.com Domain Privacy FA1334458 (NAF August 24, 2010) where the mark in question was GRAINGER and the disputed domain name <graiinger.com>.
In addition, Complainant has also drawn attention to the apparent fact that Respondent has done the same to other businesses, and there were filed with the Complaint details of the registration of several domain names al of them belonging to Respondent and all of them, according to Complainant, incorporating the names of other companies or organisations.
In these circumstances, the Panel finds that Respondent has no rights or legitimate interest in either of the disputed domain names and thus paragraph 4(a)(ii) is also proved.
Paragraph 4(b) of the Policy lists four examples of what could constitute bad faith, and in the opinion of the Panel, Respondent in this case is guilty of at least three of them, namely:
4(b)(ii) that the name was registered in order to prevent a trademark owner from reflecting his mark in a corresponding domain name.
Complainant has recounted how he was unable to register the name of his business as a “.com” domain name because Respondent had got there first. He was therefore reduced to registering his name but without the final letter S. However he was able to register the correct name in Canada. In the opinion of the Panel this registration by Respondent was clearly an attempt to prevent Complainant from registering the name of his business as a domain name and so it is a clear example of bad faith.
4(b)(iii) that the name was registered in order to disrupt the business of a competitor.
Here again, Respondent is clearly in breach as there can be no genuine reason for the registration of both of the disputed domain names other than in an effort to obstruct or disrupt Complainant’s embryonic business.
4(b)(iv) that the name was registered in order to attract users to a website by creating a likelihood of confusion with a complainant’s mark.
In this instance, confusion has been caused by the fact that Respondent actually directed anyone accessing either of the disputed domain names to their own website.
It was said, for example, in Microsoft Corporation v. Microsof.comaka Tarek Ahmed, D2000-0548 that “By using a domain name and establishing a website deliberately designed to confuse internet users and consumers regarding the identity of the seller of the goods and services, Respondent has not undertaken a bona fide or good faith offering of the goods and services. Also, in Red Bull GmbH v. Gutch D2000-0766 (WIPO September 21, 2000) it was found that the Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the Complainant and thus t was the equivalent of bad faith use. Also, in Classic Metall Roofs LLC v. Interlock Industries, Limited FA724554 (NAF August 1, 2006) it was found that Respondent had registered and used the domain name >clasicmetal roofing.com> in bad faith by redirecting internet users to his own competing website.
In the light of the evidence and arguments of Complainant as well as the above precedents, the Panel has no hesitation in finding that both of the disputed domain names were registered in bad faith and that paragraph 4(a)(iii) is therefore proved.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <welldonebbqs.com> and <welldonebbqcleaning.com> domain names be TRANSFERRED from Respondent to Complainantt.
David H Tatham, Panelist
Dated: August 9, 2013
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