Doheny Plumbing, Inc. v. Jennifer Lutz
Claim Number: FA1508001635896
Complainant is Doheny Plumbing, Inc. (“Complainant”), represented by Katherine Bond of Leech Tishman Fuscaldo & Lampl LLP, California, USA. Respondent is Jennifer Lutz (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dohenyplumbing.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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 31, 2015; the Forum received payment on August 31, 2015.
On September 1, 2015, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <dohenyplumbing.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 September 3, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 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@dohenyplumbing.com. Also on September 3, 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 September 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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
Complainant uses the DOHENY PLUMBING mark in connection with plumbing and contractor repair services. Complainant has registered the DOHENY PLUMBING mark with the likes of the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,853,465, first use March 26, 1997, filed Feb. 22, 2010, registered Sep. 28, 2010), establishing Policy ¶ 4(a)(i) rights. Respondent’s <dohenyplumbing.com> domain name is identical to the mark as it merely eliminates spacing between words and adds the generic top-level domain (“gTLD”) “.com.”
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not commonly known by the <dohenyplumbing.com> domain name. Respondent has used the disputed domain name to operate a website which redirects to a competing plumbing services site. See Compl., at Attached Ex. E. Through its competing use, Respondent has exhibited no bona fide offering of goods or services or any legitimate noncommercial or fair use.
Complainant alleges that Respondent has registered and used the <dohenyplumbing.com> domain name in bad faith. Through its use of the disputed domain name, Respondent has intended to profit commercially from Internet user confusion per Policy ¶ 4(b)(iv). Additionally, Respondent registered and used the disputed domain name with actual knowledge of the DOHENY PLUMBING mark and Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The <dohenyplumbing.com> domain name was registered on November 20, 2006.
As the Complainant has failed to establish trademark rights to support its various contentions, the Panel finds for Respondent.
The Complainant has clearly registered the mark DOHENY PLUMBING on the Principle Registry of the United States Patent and Trademark Office. (Reg. No. 3,853,465, first use March 26, 1997, filed Feb. 22, 2010, registered Sep. 28, 2010). Although the Complainant is right that such registration may amount to prima facie evidence of the Complainant’s trademark rights in a domain name case, it is unreasonable to rely on a trademark registration dated four years after a disputed domain name was registered.
To be sustainable, such a Complainant must show evidence of its common law rights in or to a claimed trademark. Common law rights are established in a trademark when a Complainant shows expenses on advertising of a mark, consumer recognition, and media recognition. See Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (“A common law trademark must be shown by evidence such as sales figures, advertising expenditure, [and] numbers of customers.”). Such Complainants present documents or other support of the claim that the mark has come to represent the trademark holder/corporation in the minds of the consuming public.
Although the disputed domain name is identical to the Complainant’s trademark and the other elements of its UDRP complaint seem well founded, the Complainant provides no support for its claim that it has common law rights which pre-date Respondent’s registration of the disputed domain name. Adding more doubt to its claim of common law rights, in its Complaint here, the Complainant alleges that it has some 12 years of common law use; however, in its trademark application before the USPTO, it claims first use on March 26, 1997, a rather specific date.
If Complainant has evidence of its use dating back to either 1997 or 2003 and if it wants to rely on such use to establish common law rights in the present action, it is a fatal flaw to merely make such statements and not provide supporting documentation. As the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
As such, the Panel has no choice but to deny Complainant’s petition.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be denied.
Accordingly, it is Ordered that the <dohenyplumbing.com> domain name remain with Respondent.
Kenneth L. Port, Panelist
Dated: October 2, 2015
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