national arbitration forum

 

DECISION

 

Consolidated Treatment Systems, Inc. v. CPR Svcs dba Quality Bio Products

Claim Number: FA1306001507329

PARTIES

Complainant is Consolidated Treatment Systems, Inc. (“Complainant”), represented by Robert J. Morgan of Porter,Wright, Morris & Arthur, Ohio, USA.  Respondent is CPR Svcs dba Quality Bio Products (“Respondent”), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <multi-flo.org>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2013; the National Arbitration Forum received payment on June 27, 2013.

 

On June 28, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <multi-flo.org> 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 June 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 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 postmaster@multi-flo.org.  Also on June 28, 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 1, 2013.

 

On July 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

·        Complainant uses the MULTI-FLO mark to offer water waste products and solutions, including self-contained wastewater treatment units such as pumps and filter stocks. Complainant has secured its rights in the MULTI-FLO mark by way of United States Patent & Trademark Office (“USPTO”) registrations (Reg. No. 1,259,345 registered Nov. 29, 1983).

·        Respondent registered the <multi-flo.org> domain name, which is no different from Complainant’s mark, aside from adding the generic top-level domain (“gTLD”) “.org” to the mark.

·        Respondent refers to itself as “CPR Services Inc,” and claims its d/b/a is “Multi flo” and “Roland’s turbo MultiFlo Aerator & Filter Socks pvc springs.” Despite this, Respondent is not actually known by Complainant’s registered trademark. Respondent has no connection with Complainant, nor is Respondent licensed to use the MULTI-FLO mark in its business.

·        Respondent makes use of the MULTI-FLO mark throughout the website in promoting Complainant’s own goods to the public. However, the contact information to purchase goods is the contact information of a company that directly competes with Complainant.

·        Respondent intends to confuse Internet users into paying Respondent money for its illegitimate and unauthorized good sold under the MULTI-FLO mark. Respondent’s decision to use the complete MULTI-FLO mark will create the implication that Complainant must endorse this illegitimate business enterprise, when Complainant does not agree with Respondent’s business model in any way.

B. Respondent

·        Respondent claims that it has all rights to use the word “MULTI-FLO.ORG.”

·        Respondent claims that while Complainant’s marks cover completed wastewater units, Respondent just sells single unit aerators and filter socks and does not sell complete units.

FINDINGS

Complainant holds trademark rights for the MULTI-FLO mark.  Respondent’s domain name is confusingly similar to Complainant’s MULTI-FLO mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the <multi-flo.org> domain name, and that Respondent registered and uses the domain name in bad faith. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

Complainant claims that it uses the MULTI-FLO mark to offer water waste products and solutions, including self-contained wastewater treatment units such as pumps and filter stocks. Complainant has secured its rights in the MULTI-FLO mark by way of USPTO registrations (Reg. No. 1,259,345 registered Nov. 29, 1983). Complainant’s rights in the MULTI-FLO mark are sufficiently demonstrated for the purposes of 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, Complainant has met the requirements of Policy ¶ 4(a)(i).”).

 

Complainant argues that Respondent has registered the <multi-flo.org> domain name, which does nothing but add “.org” to the mark. The Panel agrees that the disputed domain name is identical to the MULTI-FLO mark under Policy ¶ 4(a)(i) because Complainant’s entire mark is used, with only the addition of a gTLD. See Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.

 

Complainant notes that Respondent refers to itself as “CPR Services Inc,” and claims it is doing business as “Multi flo” and “Roland’s turbo MultiFlo Aerator & Filter Socks pvc springs.” Complainant contends that despite this, Respondent is not actually known by Complainant’s registered trademark. Complainant also argues that Respondent has no connection with Complainant, nor is Respondent licensed to use the MULTI-FLO mark in its business. The Panel notes that Respondent identifies itself as “Roland Miles” of “CPR Service Inc.” The Panel agrees that when Respondent fails to support the proposition that it is in fact commonly known by the <multi-flo.org> domain name, Policy ¶ 4(c)(ii) is not satisfied. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).

 

Complainant argues that Respondent makes use of the MULTI-FLO mark throughout the resolving website to promote Complainant’s own goods to the public. Complainant contends that the contact information to purchase goods is the contact information of a company that directly competes with Complainant. Respondent has caused the disputed domain name to resolve to a website that attempts to boast Respondent’s competing business by using the MULTI-FLO mark to impress upon Internet users a sense of quality. The Panel agrees that appropriating the MULTI-FLO mark and using the <multi-flo.org> domain name in Respondent’s competing online business illustrates a lack of a Policy ¶ 4(c)(i) bona fide offering of goods and services, as well as a lack of any Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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).”).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent intends to confuse Internet users into paying Respondent money for its illegitimate and unauthorized goods and services improperly sold under the MULTI-FLO mark.  The Panel notes that the disputed domain name resolves to a website where Respondent uses the MULTI-FLO mark to promote its various products and services. The Panel agrees that Respondent’s misappropriation of the MULTI-FLO mark and its registration and use of the <multi-flo.org> domain name is evidence of a Policy ¶ 4(b)(iv) bad faith registration and use, constituting a scheme to confuse and deceive Internet users into paying Respondent for services. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).

 

Complainant notes that Respondent states that “Multi-flo is a registered trademark of Consolidated Treatment System Inc.” but Complainant argues that this neither explains that Respondent is an unauthorized user of the mark, nor does it explain that Complainant disapproves of Respondent and its business. Complainant believes that this statement does not defeat confusion, but in fact enhances the Internet user’s likelihood to believe that Complainant has agreed with Respondent in some way. Disclaimers such as proffered by Respondent have been held not to mitigate bad faith, even when those disclaimers were far more explicit than Respondent’s disclaimer. See, e.g., Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”). The Panel therefore agrees that Respondent’s disclaimer message does nothing to alter its bad faith use and registration under Policy ¶ 4(a)(iii).

 

Complainant finally contends it can be inferred from the use of the MULTI-FLO mark, and the similarity of Respondent’s services to the goods sold under the MULTI-FLO mark, that Respondent had actual knowledge of Complainant’s rights. The Panel agrees that the use of the mark throughout Respondent’s website, along with Respondent’s specific offering of goods in direct competition with Complainant, serves as a basis for Policy ¶ 4(a)(iii) bad faith through actual knowledge. 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").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <multi-flo.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  July 12, 2013

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page