Wes Madan / United Oil Heat, Inc., d/b/a OrderMyOil.com v. michael meehan
Claim Number: FA1701001715122
Complainant is Wes Madan / United Oil Heat, Inc., d/b/a OrderMyOil.com (“Complainant”), represented by Ryan E. Prophett of Prophett Law Office, LLC, Massachusetts, USA. Respondent is michael meehan (“Respondent”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is «orderyouroil.com», registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Fernando Triana, Esq., as Chair of the Panel
Honorable Charles K. McCotter, Jr. (Ret.) as Co-Panelist
Professor David E. Sorkin as Co-Panelist
Complainant submitted a Complaint to the Forum electronically on January 31, 2017; the Forum received payment on January 31, 2017.
On January 31, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the disputed domain name «orderyouroil.com» 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 February 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2017 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 email@example.com. Also on February 1, 2017, 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.
A timely Response was received and determined to be complete on February 17, 2017.
Complainant’s Additional Submission was received and determined to be compliant with the Rules on February 22, 2017.
Respondent’s Additional Submission was received and determined to be compliant with the Rules on February 23, 2017.
On February 28, 2017, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Fernando Triana, Esq., as Chair of the Panel, Honorable Charles K. McCotter, Jr. (Ret.) and Professor David E. Sorkin as Co-Panelists.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
a. Complainant has common law rights in the trademark ORDERMYOIL.COM, and its rights have been affirmed by a previous UDRP decision.
b. Complainant is commonly known and referred as ORDERMYOIL.COM.
c. The disputed domain name «orderyouroil.com» is confusingly similar to the trademark ORDERMYOIL.COM as it merely replaces “MY” with “YOUR.”
d. Respondent has no rights or legitimate interests in the disputed domain name «orderyouroil.com».
e. The disputed domain name «orderyouroil.com» was registered in 2016, which is eight (8) years after Complainant’s domain name, and provides the same service as Complainant.
f. Respondent is not commonly known by the disputed domain name since Respondent is “Michael Meehan” and the resolving website shows the business “M.J. Meehan Excavating, Inc.” which was incorporated in February 2015.
g. Respondent has never authorized or licensed Respondent to incorporate Complainant’s trademark into the disputed domain name.
h. Further, no bona fide offering or legitimate noncommercial or fair use is presented. Instead, Respondent’s website allows customers to order their oil on line by entering their zip code and paying with a credit card, competing with Complainant. Respondent’s principal place of business is only 16.5 miles away from Complainant.
i. Respondent registered and used the disputed domain name in bad faith. Respondent offers the same services as Complainant, in the same manner, and in the same area, with a confusingly similar iteration of Complainant’s mark.
j. Respondent had actual knowledge of Complainant.
a. The phrase “order my oil” describe the services that Complainant offers.
b. Complainant has not shown significant trademark use of ordermyoil.com or recognition as a brand.
c. Complainant alleged trademark rights, relate to a sign composed of generic or highly-descriptive terms. Hence, the substitution of words negates any likelihood of confusion.
d. Complainant rights do not extend to the disputed domain name, which does not incorporate Complainant’s alleged mark.
e. A domain name does not confer any trademark rights. Complainant has a higher onus to file compelling evidence of secondary meaning because the terms of the domain name are generic and/or descriptive.
f. Complainant uses an easy-to-remember, generic domain name (ordermyoil.com) to drive web traffic to discountheatingoilprices.com, which is the landing site of Complainant’s alleged trademark.
g. Respondent has rights and legitimate interests in the disputed domain name.
h. Respondent is using the disputed domain name with a bona fide offering of goods or services because, as Complainant concedes, Respondent’s active website allows customers to order their oil online. Thus, the terms of the domain name describe Respondent’s business and the contents of Respondent’s website.
i. Respondent registered and uses the disputed domain name in good faith.
j. There is no evidence that the disputed domain name will cause consumer confusion.
k. The generic nature of the disputed domain name and its use as a website for ordering oil rebuts Complainant’s allegation of bad faith.
l. Even if Respondent was aware of the existence of ordermyoil.com, Respondent was not aware that Complainant had any trademark rights in the generic phrase.
m. Complainant has engaged in Reverse domain-name hijacking.
C. Additional Submissions
i. The Panel in Wes Madan/United Oil Heat, Inc., d/b/a OrderMyOil.com v. William Lajoie FA 1611001702295 (Forum Dec. 27, 2016) specifically found that the Complainant has common law rights in the mark OrderMyOil.
ii. Respondent misrepresented the panel’s findings in Tiger Payment Solutions, LLC.
iii. Respondent conceded it is not commonly known by “OrderYourOil” on its Response.
i. Previous panel decisions of Complainant’s alleged common-law rights are not binding on the Panel in this case.
ii. In Tiger Payment Solutions, LLC., the Panel expressly found: “Thre is no evidence that Respondent has any trademark rights in <ordermyoil.com>”.
iii. Complainant has not provided enough evidence regarding the sales or advertising of its alleged trademark, since a declaration made by Complainant itself and USD$5,000 in advertising are not sufficient to prove secondary meaning and trademark rights.
iv. The Policy ¶ 4(c) elements are disjunctive and Respondent need only prove 1 to succeed, and therefore does not need to be commonly known by the domain name. Respondent has clearly proven it has made a bona fide offering of goods or services.
1. The disputed domain name is the combination of three words that describe the purpose of the website, which is allowing customers to order their oil online.
2. Complainant failed to prove its assertions regarding 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.
Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a disputed domain name:
(i) Before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant argues that Respondent does not have any rights or legitimate interests regarding the disputed domain name.
In this case, Respondent argues that the disputed domain name «orderyouroil.com» uses a combination of words meant to describe the services provided within the resolving website.
This Panel considers that, indeed, the disputed domain name «orderyouroil.com» is integrated by a phrase which describes the services provided by Respondent. The resolving website of the disputed domain name allows consumers to order oil online.
Moreover, Respondent is acting in good faith, since as part of freedom to compete and entrepreneurial freedom, Respondent has chosen a service and obtained a descriptive domain name to provide it.
Selling oil online and allowing consumers to order their oil, is a commercial service legally allowed and an e-commerce activity, that Respondent is performing in good faith.
Consequently, Respondent has demonstrated that before any notice of dispute, Respondent’s use of the disputed domain name is in connection with a bona fide offering of goods or services.
Thus, Respondent has established rights or legitimate interests in the disputed domain name, which Complainant failed to rebut. Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is not satisfied.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a disputed domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, who is the owner of the trademark or service mark, or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
Complainant asserts that Respondent registered the disputed domain name in bad faith as Respondent competes with Complainant. Respondent’s website offers the services described by the disputed domain name.
This Panel believes that, in view of the generic nature of the disputed domain name, the services provided are a valid Internet service which do not necessarily entail use of a domain name in bad faith.
Furthermore, Complainant did not provide evidence that: (i) indicate that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the domain name was acquired by Respondent to prevent Complainant from reflecting its trademark in the disputed domain name; or (iii) Respondent registered the disputed domain name primarily for the purpose of disrupting Complainant’s business; or (vi) Respondent acquired the disputed domain name to attract, for commercial gain, Internet users, by creating a likelihood of confusion with Complainant's trademark.
Finally, the fact that the disputed domain name is a descriptive phrase of the provided services by the resolving website, rebuts any allegation of bad faith.
Therefore, the Panel concludes that Complainant has failed to prove Respondent’s bad faith.
Consequently, all three elements of the Policy paragraph 4(a) have not been established in the present case.
Since Complainant has not satisfied paragraphs 4(a)(ii) and 4(a)(iii) of the Policy there is no need for the Panel to address paragraph 4(a)(i) of the Policy.
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 disputed domain name «orderyouroil.com» REMAINS WITH Respondent.
Fernando Triana, Esq.
Chair of the Panel
Charles K. McCotter, Jr. (Ret.)
David E. Sorkin
Dated: March 9, 2017
 See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (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)).
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