Thomas Lawson Hewitt v. WhoisGuard, Inc. / WhoisGuard Protected
Claim Number: FA1309001517472
Complainant is Thomas Lawson Hewitt (“Complainant”), Massachusetts, USA. Respondent is WhoisGuard, Inc. / WhoisGuard Protected (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bostonrubberroofing.com>, registered with eNom, 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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 2, 2013; the National Arbitration Forum received payment on September 2, 2013.
On October 25, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <bostonrubberroofing.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 October 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@bostonrubberroofing.com. Also on October 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
1. Policy ¶ 4(a)(i)
a. Complainant owns rights in the BOSTON RUBBER ROOF mark and has continuously used the mark in connection with his roofing company for thirty years.
b. The <bostonrubberroofing.com> domain name is confusingly similar to Complainant’s BOSTON RUBBER ROOF mark.
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known as <bostonrubberroofing.com>.
b. The disputed domain name resolves to the website of David Ness Construction, a competitor of Complainant.
3. Policy ¶ 4(a)(iii)
a. The disputed domain name disrupts Complainant’s business because it diverts potential customers away from Complainant.
b. Respondent has used the <bostonrubberroofing.com> domain name for its own commercial gain and the disputed domain name is likely to mislead Internet users seeking roofing services under Complainant’s mark.
4. Respondent registered the disputed domain name on December 29, 2007.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Concurrent Court Proceedings
Complainant has filed a civil action against M. Ness Inc. D/B/A/ David Ness in the Wrentham District Court, Docket No. 1357SC 000773, in connection with the <bostonrubberroofing.com> domain name. Complainant states that the Complaint with the Wrentham District Court is scheduled to be heard on January 3, 2014. The Panel notes that although Respondent in the instant proceedings is “WhoisGuard, Inc. / WhoisGuard Protected,” Complainant suggests that Respondent is really known as “David Ness”, which is why the Wrentham District Court Complaint has been filed against “M. Ness Inc. D/B/A David Ness.”
Where pending litigation may resolve issues to be determined by the UDRP arbitration, panels assess whether the concurrent court proceedings would adjudicate issues to be determined in the UDRP proceedings to decide whether to proceed with the UDRP filing. See Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (choosing to proceed under the UDRP despite concurrent court proceedings for multiple reasons, including that the proceedings appeared to be filed in a court that did not commonly adjudicate intellectual property issues).
The registrant of the <bostonrubberroofing.com> domain name is Respondent, WhoisGuard, Inc. / WhoisGuard Protected. The defendant in the Wrentham District Court case is “M. Ness Inc. D/B/A David Ness.” Therefore, without the registrant, the state court proceedings cannot completely adjudicate the issue of the transfer of the disputed domain name. Accordingly, the Panel will determine the dispute between Complainant and Respondent, who is the registrant of the disputed domain name.
Complainant, Thomas Lawson Hewitt, has common law rights in the BOSTON RUBBER ROOF mark and has continuously used the mark in connection with his roofing company at least since 1998. Respondent, WhoisGuard, Inc. / WhoisGuard Protected, registered the <bostonrubberroofing.com> domain name on December 29, 2007. The disputed domain name resolves to the website of David Ness Construction, a competitor of Complainant.
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.
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.”).
Complainant has common law rights in the BOSTON RUBBER ROOF mark. The Policy does not require that a complainant register its mark with a national trademark authority in order to sufficiently establish its rights in the mark. See, e.g., Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Rather, a complainant may demonstrate that it has developed consumer recognition and established common law rights in its mark.
Complainant has gained common law rights in the BOSTON RUBBER ROOF mark through continuous use of the mark in commerce in the Commonwealth of Massachusetts at least since 1998. Complainant has submitted evidence of his registration of the BOSTON RUBBER ROOF mark with the Commonwealth of Massachusetts (e.g., Master ID 10,919 registered November 8, 2000) and continuous use of the mark in commerce since 1998. A complainant may gain common law rights in a mark through its continuous use of the mark in commerce for many years. Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999).
Complainant contends that the <bostonrubberroofing.com> domain name is confusingly similar to his BOSTON RUBBER ROOF mark. The disputed domain name fully incorporates Complainant’s mark while merely eliminating the spaces found between words in the mark, adding the term “ing” and adding the generic top-level domain (“gTLD”) “.com.” A domain name’s elimination of spaces found in a complainant’s mark and the addition of a gTLD are irrelevant for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The disputed domain name changes the word “Roof” found in Complainant’s mark to “Roofing.” This change is a minor alteration that does not sufficiently distinguish the disputed domain name from Complainant’s BOSTON RUBBER ROOF mark. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006)(the <classicmetalroofing.com> domain name confusingly similar to the complainant’s CLASSIC METAL ROOFS mark because changing the final term of the mark from “roofs” to “roofing” was a minor alteration and did not sufficiently distinguish the domain name from the mark). Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to 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).
Complainant suggests that Respondent is not commonly known as <bostonrubberroofing.com>, because David Ness Construction is the company that is profiting from the use of the disputed domain name, and thus it is likely that Respondent is commonly known by the name of “David Ness Construction.” The WHOIS information identifies the registrant of the disputed domain name as “WhoisGuard, Inc. / WhoisGuard Protected.” A respondent is not commonly known by a disputed domain name where there is no information in the record, including the WHOIS information, to suggest otherwise. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Nothing on the record, including the WHOIS information, suggests that Respondent is commonly known as <bostonrubberroofing.com>. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).
Complainant contends 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), because Respondent is using the dispute domain name to promote Complainant’s competitor in the roofing industry, David Ness Construction. See Complainant’s Exhibit entitled “David Ness website 8-7-13.” The Panel finds that Respondent is using the disputed domain name to promote goods and services that directly compete with the roofing goods and services offered by Complainant under his BOSTON RUBBER ROOF mark. Previous panels have held that the use of a disputed domain name to host a website offering goods and services that directly compete with those offered under Complainant’s mark is not a use protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). See, e.g., Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use). Accordingly, the Panel finds that Respondent has not used the <bostonrubberroofing.com> mark 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).
Complainant argues that the disputed domain name disrupts Complainant’s business because it diverts potential customers away from Complainant. Thus, Complainant contends that Respondent has demonstrated bad faith registration and use of the <bostonrubberroofing.com> domain name pursuant to Policy ¶ 4(b)(iii). Previous panels have held that a respondent demonstrates bad faith disruption of the complainant’s business under Policy ¶ 4(b)(iii) where the domain name is substantially similar to the complainant’s mark and is used to operate a website offering services that compete with Complainant’s services. See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). The Panel finds that Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii).
Complainant contends that Respondent has demonstrated bad faith registration and use of the <bostonrubberroofing.com> domain name under Policy ¶ 4(iv) because Respondent has used the disputed domain name for its own commercial gain and the domain name is likely to mislead Internet users seeking roofing goods and services under Complainant’s BOSTON RUBBER ROOF mark. A respondent demonstrates bad faith pursuant to Policy ¶ 4(iv) where the disputed domain name resolves to website that offers services competing with those offered by the complainant, because under these circumstances, Internet users are likely to be confused as to the source or sponsorship of the resolving website. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the disputed domain name to resolve to a website where similar services were offered was likely to confuse the user into believing that the complainant was the source of or was sponsoring the services offered at the site). The Panel finds that Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(iv).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bostonrubberroofing.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 19, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page