TermiGuard Inc., c/o Jim Allen, President v. Betty T. Fisher
Claim Number: FA1605001673186
Complainant is TermiGuard Inc., c/o Jim Allen, President (“Complainant”), New Jersey, United States. Respondent is Betty T. Fisher (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <termiguardservices.com>, registered with Network Solutions, LLC.
The undersigned certifies that he she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 3, 2016; the Forum received payment on May 3, 2016.
On May 4, 2016, Network Solutions, LLC confirmed by e-mail to the Forum that the <termiguardservices.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 10, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2016 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@termiguardservices.com. Also on May 10, 2016, 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 June 3, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
On June 13, 2016, pursuant to Rule 12 of ICANN’s Uniform Domain Name Dispute Resolution Policy, Panel issued a Procedural Order requesting Complainant to provide additional information as stated below by June 21, 2016:
The Panel notes that Complainant has made unsupported arguments. More specifically, Complainant is making unsupported arguments in following three points:
i) Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent has failed to make any active use of the disputed domain name.
ii) As aforementioned, the Panel notes that Complainant has neglected to provide any evidence to support its allegation of Respondent’s non-use of the domain to prove Respondent’s bad faith registration and use.
iii) Complainant argues that Respondent’s bad faith registration and use is made evident by Respondent’s use of false WHOIS information at the time of its domain name registration. However, Complainant has failed to provide any evidence to support this contention.
On June 17, 2016, Complainant timely submitted Additional Submission in response to Panel's Procedural Order.
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
i) Complainant uses its TERMIGUARD SERVICES mark in conjunction with its pest control, mold remediation, and waterproofing services. Due to its past extensive marketing and press of the mark, Complainant owns common law rights in the mark that predate Respondent’s registration of the <termiguardservices.com> domain. The <termiguardservices.com> domain is identical to Complainant’s mark, save for the affixation of the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent has failed to make any active use of the domain.
iii) Respondent has registered and is using the disputed domain name in bad faith. Complainant originally owned the domain in question; Complainant registered the domain on November 29, 2011 and inadvertently let the registration lapse. Since Respondent acquired the disputed domain, it has failed to make any active use of it. Further, Respondent registered the domain using false WHOIS information, thereby demonstrating bad faith registration and use.
B. Respondent
Respondent did not submit a response in this proceeding. The Panel notes that the disputed domain name was registered on February 19, 2016.
C. Complainant's Additional Submission
On June 17, 2016, Complainant submitted Additional Submission in response to Panel's Procedural Order. By way of Additional Submission, Complainant submitted evidence of non-use of the disputed domain name along with evidence supporting Respondent’s use of false WHOIS information at the time of its domain name registration.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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(f), 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 (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 uses its TERMIGUARD SERVICES mark in conjunction with its pest control, mold remediation, and waterproofing services. Complainant argues that due to its past extensive marketing and press of the mark, it owns common law rights in the mark that predate Respondent’s registration of the <termiguardservices.com> domain. As evidence of its common law rights, Complainant has provided an Alternate Name Document, which Complainant argues shows that the TERMIGUARD SERVICES mark is a legally registered corporation with the state of New Jersey; the document details a “Date of Incorporation/Formation” of April 9, 2001. Complainant has also submitted pictures of its signage and company vehicle, both of which display the TERMIGUARD SERVICES mark; Complainant alleges that it has used the TERMIGUARD SERVICES mark on its signage and vehicles since January 1, 2012. Panels have found that continued use of a mark and advertising done to promote a mark can establish a complainant’s common law rights. See Surecom Corp. NV v. Rossi, FA 1352722 (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); see also AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Accordingly, the Panel finds that Complainant has demonstrated common law rights in its mark under Policy ¶ 4(a)(i).
Complainant argues that the <termiguardservices.com> domain is identical to Complainant’s mark, save for the affixation of the gTLD “.com.” The Panel notes that the domain also eliminates the spacing between the words of Complainant’s mark. Panels have held that the affixation of the “.com” gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See SCOLA v. Wick, FA 1115109 (Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”). Panels have also held that the elimination of the spacing between the words of a complainant’s mark does not serve to adequately distinguish a respondent’s domain from a complainant’s mark. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark). For these reasons, the Panel finds that Respondent’s disputed domain name is identical 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 (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 (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 argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The Panel notes that the WHOIS information merely lists “Betty T. Fisher” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent has failed to make any active use of the disputed domain name. The Panel notes that Complainant has provided evidence to support this contention. Panels have agreed that a respondent’s failure to make any active use of a domain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). As the Panel agrees with Complainant’s contention, in the absence of a Response it finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See CBS Broadl, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Complainant argues that it originally registered the domain in question on November 29, 2011, and that it inadvertently let the registration lapse. The Panel duly notes Complainant’s evidence that purportedly shows Complainant registered the domain in question on the aforementioned date. Since Respondent’s acquisition of the disputed domain, Complainant alleges that Respondent has failed to make any active use of it. Panel notes that Complainant has additionally provided evidence to support its allegation of Respondent’s non-use of the domain. Panels have concluded that a respondent’s failure to make any active use of a domain constitutes bad faith registration and use per Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). As the Panel accepts and agrees with Complainant’s argument, in the absence of Response it finds that Respondent has engaged in conduct proscribed by Policy ¶ 4(a)(iii).
Complainant argues that Respondent’s bad faith registration and use is made evident by Respondent’s use of false WHOIS information at the time of its domain name registration. The Panel notes that Complainant has additionally provided evidence to support this contention. As asserted by Complainant, panels have held that a respondent’s use of false WHOIS information when registering a disputed domain constitutes bad faith registration and use per Policy ¶ 4(a)(iii). See Enterprise Holdings, Inc. v. Enterprise Online Services, Ltd, FA1444232 (Forum June 14, 2012) (“Respondent provided false WHOIS information. That alone is sufficient grounds to find bad faith registration and use of a domain name.”). As Panel finds Complainant’s argument persuasive, in the absence of Response it finds that Respondent has engaged in bad faith registration and use per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <termiguardservices.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 20, 2016
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