Servpro Industries, Inc. and Servpro Intellectual Property, Inc. v. Patricia L'Hommedieu
Claim Number: FA1405001560946
Complainant is Servpro Industries, Inc. and Servpro Intellectual Property, Inc. (“Complainant”), represented by Ryan D. Levy of Waddey & Patterson, P.C., Tennessee, USA. Respondent is Patricia L'Hommedieu (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <servpros.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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 22, 2014; the National Arbitration Forum received payment on May 22, 2014.
On May 23, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <servpros.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 May 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 2014 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@servpros.com. Also on May 30, 2014, 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 June 25, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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.
Complainant
1. Policy ¶ 4(a)(i)
a. Complainant owns the SERVPRO mark through its registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,845,906 registered July 19, 1994).
b. Complainant uses the mark in connection with home and commercial cleanup and restoration services.
c. The <servpros.com> domain name is confusingly similar to the SERVPRO mark.
2. Policy ¶ 4(a)(ii)
a. Respondent is not authorized to the use the SERVPRO mark. Respondent is not commonly known by the disputed domain name.
b. Respondent previously resolved the dispute domain name to a website advertising goods and services in direct competition with Complainant’s offered goods.
c. After receiving notice of this proceeding, Respondent switched the landing page.
3. Policy ¶ 4(a)(iii)
a. Respondent registered the disputed domain name for the primary purpose of disrupting Complainant’s business.
b. Respondent has attempted to attract, for commercial gain, Internet users by creating confusion as to Complainant’s affiliation with the disputed domain name the associated content on the resolve page. The disputed domain name resolved to a competing website, from which Respondent sought commercial gain.
c. Respondent was aware of Complainant’s rights in the SERVPRO mark at the time the disputed domain name was registered. Such knowledge evinces bad faith.
Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 claims to own the SERVPRO mark through its registration with the USPTO (Reg. No. 1,845,906 registered July 19, 1994). Complainant uses the mark in connection with home and commercial cleanup and restoration services. Complainant alleges that its USPTO registration satisfies the requirements of Policy ¶ 4(a)(i). Past panels agree. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark). Accordingly, the Panel finds that Complainant’s registration of the SERVPRO mark with the USPTO is sufficient to demonstrate rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <servpros.com> domain name is confusingly similar to the SERVPRO mark. Complainant alleges that the disputed domain name merely adds the letter “s” to the SERVPRO mark, as well as the generic top-level domain (“gTLD”) “.com.” The Panel agrees that the addition of a letter “s” and a gTLD are insufficient to distinguish the resulting domain name from the incorporated mark pursuant to Policy ¶ 4(a)(i). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)).
Complainant has proven this element.
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.”).
In arguing that Respondent lacks rights and legitimate interests, Complainant contends that Respondent is not authorized to the use the SERVPRO mark. Further, Complainant claims that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS record identifies “Patricia L'Hommedieu” as the registrant of record. Further, the Panel notes that Respondent did not submit a response in this proceeding and therefore has failed to refute any contentions made by Complainant. In light of the available evidence, the Panel finds that Respondent is not commonly known by the dispute domain name under Policy ¶ 4(c)(ii). See Jordan Cook p/k/a Reignwolf v. Ryan Crase, Ryan Crase Creative Media, FA 1520515 (Nat. Arb. Forum Oct. 28, 2013) (noting that past panels had “declined to make findings under Policy ¶ 4(c)(ii) when the respondent did not make any claim that it was actually known by the domain names. Th[is] Panel agrees that there is no evidence that Respondent is known by the <reignwolf.com> and <reignwolfmusic.com> domain names under Policy ¶ 4(c)(ii).”).
Complainant alleges that Respondent previously resolved the disputed domain name to a website advertising goods and services in direct competition with Complainant’s offered goods. Notably, Complainant alleges the disputed domain name resolved to the website belonging to Claims Services International (“CSI”), a competitor of Complainant. Complainant claims that after Respondent was given notice of this proceeding through a cease-and-desist letter sent to CSI, the landing page was switched. Complainant argues that the previous landing page offering competing goods demonstrates that Respondent’s use does not amount to a bona fide offering of goods or services, or a noncommercial or fair use. Complainant has provided a current screenshot of the page resolving from the disputed domain name in Complainant’s exhibits. In Complainant’s exhibits, Complainant included an email received from CSI, which Complainant claims demonstrates a link between the disputed domain name and CSI; namely, that CSI owned the name. The Panel accepts Complainant’s allegations and determines Respondent’s prior use of the disputed domain name did not amount to 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). See Hale Prods., Inc. v. Hart Int’l Inc., FA 198031 (Nat. Arb. Forum Dec. 2, 2003) (finding that Respondent lacked rights and legitimate interests in the <jawsoflife.com> domain name where it was being used to divert Internet users to the website for Phoenix Rescue Tools, one of Complainant’s direct competitors).
Complainant has proven this element.
Complainant argues that Respondent registered the <servpros.com> domain name for the primary purpose of disrupting Complainant’s business. Complainant alleges that Respondent initially resolved the disputed domain name to a website competing with Complainant in the field of home and commercial restoration services. The Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iii) as the disputed domain name resolved to one of Complainant’s competitor’s websites, which amounts to commercial disruption. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant claims that, for commercial gain, Respondent has attempted to attract Internet users by creating confusion as to Complainant’s affiliation with the disputed domain name and the associated content on the resolve page. Complainant alleges that the disputed domain name resolved to a competing website, from which Respondent sought commercial gain. The Panel determines that Respondent has attempted to confuse users as to Complainant’s affiliation with the disputed domain name in an effort to commercially benefit. The Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Complainant alleges that Respondent was aware of Complainant’s rights in the SERVPRO mark at the time the disputed domain name was registered. Complainant argues that such knowledge evinces bad faith. While constructive notice is generally not considered sufficient evidence to find bad faith, past panels have inferred bad faith based on the use of the disputed domain name and fame of the mark. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Accordingly, the Panel concludes that Respondent had actual knowledge of Complainant’s mark at the time of registration based on the present circumstances, and finds that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <servpros.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: July 2, 2014
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