PuroSystems, LLC v. SONJA SEYMOUR / PUROCLEAN DAMAGE SPECIALISTS
Claim Number: FA1703001723188
Complainant is PuroSystems, LLC (“Complainant”), represented by Michael R. Brodarick, Florida, USA. Respondent is SONJA SEYMOUR / PUROCLEAN DAMAGE SPECIALISTS (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <seattlepuroclean.com>, registered with eNom, Inc.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 22, 2017; the Forum received payment on March 22, 2017.
On March 23, 2017, eNom, Inc. confirmed by e-mail to the Forum that the <seattlepuroclean.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 March 29, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 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 postmaster@seattlepuroclean.com. Also on March 29, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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
Since the Complaint is unusually succinct and summary, its substantive portion is reproduced verbatim below:
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The domain name includes the proprietary name “PuroClean” preceded by the geographic description “Seattle.” The domain name implies that it is associated with a PuroClean® office in the Seattle area. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶ 4(a)(i).
[b.] Respondent has no license to use the PuroClean® name or marks. The Puroclean® brand is licensed to restoration companies through franchise agreements. Although the registration is private, Respondent appears to have formerly been a PuroClean® franchise owner and therefore had a limited license to use the PuroClean® name and marks at one time. However, the franchise agreement was terminated on December 1, 2016. A copy of the applicable termination agreement is annexed to this complaint. Regardless, the PuroClean® branding guidelines do not allow the registration of domains including the PuroClean® family of marks by franchise owners. Respondent therefore never held the right to register domains containing the PuroClean® name. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶ 4(a)(ii).
[c.] All Web users seeking PuroClean® in the Seattle area are directed solely and exclusively to Respondent’s site rather than to Complainant’s PuroClean® site, PuroClean.com. Complainant is the mark holder. By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ web site location. See Heel Quik!, Inc. v. Goldman FA 0092527 (Forum Mar. 1, 2000). Although Respondent “may have been known locally by the domain name, such was as licensee or franchisee of an international franchiser and does not constitute common knowledge of the domain name. Local knowledge of a franchisee with a license to use the franchise name locally does not necessarily show common knowledge of the domain name as the knowledge is limited by the terms of the license.” Id.
In addition to the above, Complainant provides evidence that it owns a family of PUROCLEAN marks which are used in connection with property damage restoration and disaster recovery services, with rights dating back to 2003.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark PUROCLEAN, with rights dating back to 2003.
The disputed domain name was registered in 2011.
In 2011, Respondent was a franchisee of Complainant.
The disputed domain name was used for several years to resolve to a web site very similar to Complainant’s web site, featuring Complainant’s products and services and Complainant’s trade dress and logo.
The disputed domain name is not being used at present.
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 will apply the consensus view of WIPO Panelists as expressed in the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition” ("WIPO Overview 2.0"), which states under 4.6:
A respondent's default does not automatically result in a decision in favor of the complainant. Subject to the principles described in paragraph 2.1 above with regard to the second UDRP element, the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding. There are many examples of cases (typically involving complaints based on wholly unsupported assertions or mere conclusory statements) to which there has been no response where (not withstanding such respondent default) the decision has nonetheless gone in favor of the respondent on grounds that the complainant has failed to prove its case.
See Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, D2010 (WIPO Oct 27, 2010); see also Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, D2004-0383,(WIPO June 29, 2004); Mancini's Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1036, (WIPO Sept. 30, 2008).
Further, given the laconic nature of the Complaint, the Panel will undertake limited factual research as specified in 4.5 of the WIPO Overview 2.0:
A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name, consulting a repository such as the Internet Archive (at www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias to determine any common meaning, or discretionary referencing of trademark online databases. …
See Descente, Ltd. and Arena Distribution, S.A. v. Portsnportals Enterprises Limited, D2008-1768 (WIPO Jan. 22, 2009); see also Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, D2010 (WIPO Oct 27, 2010); see also Société des Produits Nestlé SA v. Telmex Management Services, D2002-0070 (WIPO Apr. 2, 2002).
As a preliminary matter, the Panel notes that, given the scarcity of the evidence provided by Complainant, it is unable to determine whether this case falls within the scope of the UDRP or whether it would better be handled in national court proceedings. See Indoor Air Technologies, Inc. v. Casey Janke / My Tech Company LLC / Privacy Administrator / Anonymize, Inc., FA 1714547 (Forum Mar. 14, 2017); see also Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); Frazier Winery LLC v. Hernandez, FA 841081 (Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
For the reasons given below, the Panel finds that it need not determine that matter.
The disputed domain name is confusingly similar to Complainant’s mark because it merely eliminates the space, adds the geographic description “Seattle” and appends the generic top-level domain name “.com” to the PUROCLEAN mark. Such alterations have not been considered distinguishing under a Policy ¶ 4(a)(i) analysis. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (concluding that “Panels have consistently held that the addition of a gTLD does not distinguish a domain name from a mark, and that the removal of spaces between words of a mark is irrelevant.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s PUROCLEAN mark.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims Respondent is a former franchise owner who had a limited license to use the PUROCLEAN mark at one time.
The mutual termination agreement submitted by Complainant is between Complainant and V12, Inc., represented by David Rost. This is not evidence to the effect that Respondent was a former franchise owner.
The franchise agreement was terminated on Dec. 1, 2016. Complainant asserts—without providing evidence—that its branding guidelines do not allow the registration of domains including the PUROCLEAN family of marks by franchise owners, and therefore, Respondent explicitly never had the right to register domain names involving the PUROCLEAN mark.
The mutual termination agreement refers to post-termination agreements under the Franchise Agreements, but does not specify them. Complainant did not submit the Franchise Agreement.
Consultation of The Wayback Machine at <archive.org> shows that, from July 2013 through October 2016, the disputed domain name resolved to a web site very similar to Complainant’s web site, featuring Complainant’s products and services and Complainant’s trade dress and logo.
The disputed domain name is not being used at present: it resolves to a web site that displays “Nothing to see here.”
In light of the above, the Panel finds, on the balance of the evidence, that Respondent was at one time a licensed franchisee of Complainant. Given that Complainant did not provide the Franchise Agreement, the Panel is unable to determine whether or not Complainant had, and still has, rights or legitimate interests in the disputed domain name.
Complainant cites Heel Quik, Inc. v Michael H. Goldman & Barbara S. Goldman, FA 92527 (Forum March 1, 2000). But that case must be distinguished from the present case, because in the cited case Complainant has presented evidence to the effect that Respondent’s use of Complainant’s trademark violated the terms of the License Agreement between the parties; whereas, in the instant case, Complainant has not presented any evidence to support its allegation that Respondent was contractually bound not to use Complainant’s mark in a domain name.
For the reasons given below, the Panel will not make a determination regarding this element of the Policy.
Complaint does not provide evidence to show that Respondent registered the domain name in bad faith. It alleges (without supporting evidence) that Respondent was a franchisee of Complainant and (again without supporting evidence) that registration of the disputed domain name in 2011 violated the franchising agreement.
Complainant has not satisfied its burden of proving that, if Respondent was a franchisee of Complainant, its registration of the disputed domain name in order to promote its business activities as a franchisee was in bad faith in the sense of the Policy. As noted above, the disputed domain name was used for several years to resolve to a web site very similar to Complainant’s web site, featuring Complainant’s products and services and Complainant’s trade dress and logo.
The evidence in the file indicates that Respondent may have registered the disputed domain name in good faith (in the sense of the Policy) as part of its business activities as a franchisee of Complainant. It is important to note that the current registrant of the disputed domain name is the original registrant, and that Complainant alleges that that party was its franchisee. The situation would be different if the disputed domain name has been transferred, or if the original registrant had not been a franchisee of Complainant.
The Panel notes that Complainant has not alleged that it corresponded directly with Respondent to request a transfer of the disputed domain name.
Complainant asserts that Respondent is disrupting its business because all Internet users seeking its services in the Seattle, Washington area are directed solely and exclusively to Respondent’s site rather than to Complainant’s site <puroclean.com>.
Complaint does not provide any evidence to support this allegation. Contrary to what Complainant alleges, a search on “Seattle PuroClean” leads to Complainant’s web site, and a search on that web site leads to licensed franchisees in the Seattle area.
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the PUROCLEAN mark.
Complainant does not provide any evidence to support this allegation. As already noted, the web site at the disputed domain name is not being used. While a finding of bad faith use can be made if a web site is not being used, the Panel finds that such a finding is not justified in light of the circumstances of the instant case. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith).
Consequently, the Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
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 <seattlepuroclean.com> domain name REMAIN WITH Respondent.
Richard Hill, Panelist
Dated: April 30, 2017
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