Roto-Rooter Corporation v. CONSTANTINE DIONYSIOU
Claim Number: FA1504001616225
Complainant is Roto-Rooter Corporation (“Complainant”), represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio, USA. Respondent is CONSTANTINE DIONYSIOU (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rotorooter911.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 24, 2015; the Forum received payment on April 24, 2015.
On April 24, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <rotorooter911.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 April 28, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 2015 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@rotorooter911.com. Also on April 28, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 is the largest provider of plumbing and drain cleaning services in North America and has used the ROTO-ROOTER mark in connection with its business since 1934.
b. Complainant’s rights in the ROTO-ROOTER mark have been established through numerous registrations with certifying agencies, including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 597,721, registered November 2, 1954).
c. Respondent’s disputed <rotorooter911.com> domain name is confusingly similar to Complainant’s ROTO-ROOTER mark. The disputed domain only differs from Complainant’s mark through the lack of a hyphen and the inclusion of the term “911.” These two differences are not sufficient to prevent a finding of confusing similarity.
a. Respondent has not been licensed or allowed to use the ROTO-ROOTER mark in any fashion. Further, there is no evidence to indicate that Respondent has been or is commonly known by the disputed domain name. WHOIS information identifies Respondent as “Constantine Dionysiou.”
b. Respondent’s website uses Complainant’s ROTO-ROOTER mark to divert customers seeking Complainant’s services to its own website offering competing services, and, as such, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
a. Respondent appears to have registered the domain name with the intent to divert and disrupt Complainant’s business.
b. Respondent’s lack of affiliation or endorsement with Complainant demonstrates bad faith.
c. Respondent was aware of Complainant’s ROTO-ROOTER mark when registering the disputed domain name.
B. Respondent
1. Respondent failed to submit a Response in this proceeding.
1. Respondent’s <rotorooter911.com> domain name is confusingly similar to Complainant’s ROTO-ROOTER mark.
2. Respondent does not have any rights or legitimate interests in the <rotorooter911.com> domain name.
3. Respondent registered or used the <rotorooter911.com> domain name in bad faith.
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, Roto-Rooter Corporation, contends that it is the largest provider of plumbing and drain cleaning services in North America. Complainant has used the ROTO-ROOTER mark in connection with its business since 1935. Complainant argues that its rights in the ROTO-ROOTER mark have been established through numerous registrations with certifying agencies including the USPTO (Reg. No. 597,721, registered November 2, 1954). Previous panels have held that registration with the USPTO is sufficient to establish a complainant’s rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel holds that Complainant has adequately established its rights in the ROTO-ROOTER mark pursuant to Policy ¶ 4(a)(i).
Complainant also contends that Respondent’s disputed <rotorooter911.com> domain name is confusingly similar to Complainant’s ROTO-ROOTER mark. The Panel notes that the disputed domain includes Complainant’s complete ROTO-ROOTER mark. The differences between Complainant’s mark and the disputed domain name consist of the lack of a hyphen and the inclusion of the term “911.” The Panel notes that the disputed domain name also differs from Complainant’s mark by the addition of the generic top-level domain (“gTLD”) “.com.” Complainant argues that thesedifferences are not sufficient to prevent a finding of confusing similarity. Previous panels have held that a difference in the use of punctuation in a mark, such as a hyphen, and the addition of a gTLD do not affect the similarity between a complainant’s mark and a disputed domain name. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Panels have also held that the addition of a generic or descriptive word to a complainant’s mark is not sufficient to differentiate from a mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel finds that Respondent’s disputed domain name and Complainant’s ROTO-ROOTER mark are confusingly similar under 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); 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.”).
Complainant urges that Respondent has not been licensed or allowed to use the ROTO-ROOTER mark in any fashion. Further, Complainant argues that there is no evidence to indicate that Respondent has been or is commonly known by the disputed domain name. Complainant has provided WHOIS information identifying the registrant of the <rotorooter911.com> domain name as “Constantine Dionysiou.” See Compl., at attached Ex. A. Panels have found a respondent is not commonly known by a disputed domain name based on relevant WHOIS information and other available evidence in the record. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel accordingly finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also contends that Respondent’s disputed domain name uses Complainant’s ROTO-ROOTER mark to divert customers seeking Complainant’s services and as such is not a bona fide offering of goods or services. Complainant includes Exhibit E to show that Respondent’s disputed <rotorooter911.com> domain name resolves to a website that offers “Plumbing & Drain Service”. Exhibit B shows Complainant’s <rotorooter.com> domain name also prominently advertises “Plumbing & Drain Service.” Previous panels have held that a respondent offering services in competition with a complainant, through a confusingly similar disputed domain name, is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”). The Panel finds that Respondent’s use of the disputed <rotorooter911.com> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant argues that Respondent acted in bad faith through its registration of the disputed domain name with the intent to divert and disrupt Complainant’s business. Previous panels have found a respondent acted in bad faith where a complainant’s mark is being used by a respondent’s website to offer competing 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)). As demonstrated previously, Exhibits B and E show that Complainant and Respondent both offer identical “Plumbing & Drain Services.” Further, the Panel notes that Exhibit F shows Respondent operates in the same geographical area as Complainant. The Panel also notes that WHOIS information indicates that Respondent registered the disputed <rotorooter911.com> domain name in November of 2011 whereas Complainant first registered the ROTO-ROOTER mark in 1954 and has been operating a plumbing business connected to the mark for almost eighty years. See Complainant’s Exhibit D. Accordingly, the Panel finds that Respondent’s disputed <rotorooter911.com> domain name was registered in bad faith under policy ¶ 4(b)(iii).
Complainant urges that Respondent’s lack of affiliation or endorsement with Complainant and the then intentional redirection of Internet users to Respondent’s own website for commercial gain indicates bad faith. Previous panels have held that confusion regarding affiliation with a complainant’s mark can be an indication of bad faith where the disputed domain name includes a complainant’s entire mark for the purposes of commercial gain. See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). The Panel finds that Respondent acted in bad faith under Policy ¶ 4(b)(iv).
Complainant asserts that its trademark registrations for the ROTO-ROOTER mark existed well before the registration of the disputed domain name. Complainant argues that Respondent had knowledge of Complainant's rights in the mark when it registered the disputed domain name, due to the unique aspect of Complainant’s name. While panels have concluded that mere constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark and the unique detail of its name, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration)."
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rotorooter911.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 10, 2015
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