City Wide Franchise Company, Inc. v. Cheri Quillen / City Wide Janitorial Services, LLC
Claim Number: FA1703001723195
Complainant is City Wide Franchise Company, Inc. (“Complainant”), represented by Eric C Carter of Carter Law Corp., Kansas, USA. Respondent is Cheri Quillen / City Wide Janitorial Services, LLC (“Respondent”), represented by Randall G. Vaughan of Pray Walker, Oklahoma, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citywideok.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC 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, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <citywideok.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 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@citywideok.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.
A timely Response was received and determined to be complete on April 13, 2017.
On April 25, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant provides commercial janitorial services with franchises in multiple states, including Oklahoma.
2. Complainant uses the CITY WIDE mark in conjunction with its business services. Complainant registered the CITY WIDE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,590,034, registered Mar. 17, 2009). See Compl., at Attached Annex.
3. Respondent’s owner has had prior business dealings with Complainant and has pilfered the unusual spelling of the name “City Wide”.
4. The disputed domain name is identical or confusingly similar to the CITY WIDE mark.
5. Respondent has no rights or legitimate interests in the <citywideok.com>. domain name. Respondent’s use of the disputed domain name creates confusion within the industry and diverts customers away from Complainant and it was intentionally chosen to achieve that objective.
6. Respondent registered and has used the <citywideok.com> domain name in bad faith. The disputed domain name attempts to attract Internet users for Respondent’s commercial gain. Respondent’s logo uses the same color scheme to further create confusion. Respondent registered <citywideok.com> with actual knowledge of Complainant and its rights to the CITY WIDE mark.
7. Respondent is intentionally attempting to attract, by using the domain and for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark as to the affiliation and/or franchise status of Respondent and its services. Respondent’s use of the Complainant’s name, logo, and domain name is particularly egregious in light of Respondent’s full knowledge of Complainant’s rights, as Respondent’s owner had previously performed work with an affiliate of Complainant in Kansas City before moving to Tulsa and misappropriating Complainant’s name.
B. Respondent
Respondent made the following contentions
1, Complainant has no standing to file the Complaint as the evidence that the company City Wide Holding Company, Inc. has a registered trademark is not evidence that Complainant itself has a trademark.
2. The Complaint is a claim designed to hinder Respondent from engaging in competition with Complainant and is therefore not the type of dispute contemplated by the UDRP.
3. Contrary to the allegations of Complainant, neither of Respondents had prior commercial dealings with Complainant.
4. Respondent began business under the City Wide name in Tulsa, Oklahoma in 2004. It registered a State trademark including the term CITY WIDE in April 2005 and modified it in 2008.
5. Respondent registered the disputed domain name on 26 March 2008 and has used it in connection with its business in Oklahoma, which State is known by the abbreviation “OK”.
6. If Complainant has rights in the CITY WIDE mark relied on by Complainant, that trademark was not registered until 17 March 2009, after Respondent had registered the disputed domain name and long after Respondent incorporated and began trading in Oklahoma City as City Wide.
7. The disputed domain name is not identical or confusingly similar to the CITY WIDE mark.
8. Respondent has a right or legitimate interest in the disputed domain name by virtue of the fact that on 26 March 2008 it registered the domain name which incorporates its business name. Moreover, Complainant disclaimed the exclusive right to use “City Wide” other than in the trademark relied on by Complainant. The term “City Wide” is also a generic term used extensively by others on the internet which Respondent has a right to use. The domain name also reflects Respondent’s bona fide offering of goods and services and has been used for that purpose.
9. Respondent did not register or use the disputed domain name in bad faith as it had a bona fide business purpose in using it. Respondent did not have the intention of causing confusion with Complainant’s trademark and has not done so. Respondent had no prior knowledge of Complainant’s alleged rights in that mark and did not register the domain name to disrupt Complainant’s business.
10. The Panel should make a finding of Reverse Domain Name Hijacking against Complainant.
1. Complainant is a United States company engaged in the business of providing commercial janitorial services including by franchisees and including in Oklahoma.
2. Respondent is a United States company engaged in the business of providing commercial janitorial services in Tulsa, Oklahoma.
3. Complainant relies on a trademark registered in the United States Patent and Trademark Office (“USPTO”), namely (e.g., Reg. No. 3,590,034, filed February 7, 2008, registered Mar. 17, 2009) in the name of City Wide Holding Company, Inc. (“the CITY WIDE mark.”).
4. Respondent registered the disputed domain name on March 26, 2008.It resolves to a website that describes Respondent’s business in Tulsa, Oklahoma.
Other facts are in dispute and will be discussed in the relevant sections of this decision.
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.
The first question that arises is whether Complainant has a trade or
service mark on which it may rely, as this is an essential element of
the UDRP that must be proved. Complainant submits that it
provides commercial janitorial services with franchises in multiple
states, including Oklahoma. Complainant submits that it uses the
CITY WIDE mark in conjunction with its business services.
Complainant claims it registered the CITY WIDE mark with
USPTO (e.g., Reg. No. 3,590,034, registered Mar. 17, 2009). See
Compl., at Attached Annex. The consensus among UDRP panelists
is that such a registration is ample evidence that a complainant has
rights in the trademark depicted in the certificate. However, the
certificate must show that the trademark is registered in the name of
the complainant. The attachment that is in evidence in the present
case is a copy of a trademark for CITY WIDE registered not in the
name of Complainant but in the name of City Wide Holding
Company Inc., which is not the Complainant. Nor is there any
explanation in the Complaint that City Wide Holding Company Inc.is a
company related to Complainant or any other basis on which it might
be said that Complainant has any rights in the mark which is clearly
the property of another entity. In other words, no evidence is adduced
to the effect that Complainant has rights in a trademark, which is the
express requirement of paragraph 4(a)(i) of the Policy. Here it must
be remembered that the UDRP is a summary procedure where
parties do not have the benefit of a full trial with the usual
safeguards. That being so, panels do and are entitled to insist on full
proofs of the requisite elements of the Policy such as evidence of a
trademark and Respondent is entitled to submit that the lack of
evidence of a trademark in which Complainant has rights is fatal to
Complainant’s case. To explain the matter further it should be noted
that Complainant’s short submission is that “Complainant, City Wide
Holding Company, Inc., provides commercial janitorial
services … “and that “… Complainant holds a trademark, Register
No. 3590034…”, both of which statements are incorrect, as the
Complainant is not City Wide Holding Company, Inc., and the
Complainant does not hold the trademark in question. Nor is it
alleged anywhere that Complainant has a common law or
unregistered trademark that might form the basis of its claim. It is
unfortunate that Complainant has not stated whether City Wide
Holding Company, Inc., is a holding or related company, which it may
well be, and has not provided any information about its activities or
the places where it operates and how this has come about.
Accordingly, the Panel can act only on the evidence before it and that
evidence does not show that Complainant holds a trademark at all.
Complainant has therefore not established the first essential matter
that it must prove, namely proof of a trademark, and for that
reason the Complaint cannot succeed.
Even if the CITY WIDE mark were a trademark of Complainant, the
question would still arise whether the domain name is identical or
confusingly similar to that trademark. It should first be said that the
registered CITY WIDE trademark, although it is a word mark and the
words included are CITY WIDE, includes a drawing of a city skyline
and it should also be said that the registration includes a
disclaimer that
“NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "CITY
WIDE" APART FROM THE MARK AS SHOWN.”
Complainant therefore has no exclusive right to use the words “City
Wide” by themselves.
Complainant must therefore persuade the Panel, not that the
disputed domain name contains the words “city wide”, but that the
domain name is identical or confusingly similar to a trademark
containing those words together with a drawing of a city skyline, as
that is the trademark relied on. As was noted by the panel in
Advanced Educ. Sys., LLC v. Bean FA 948593 (Forum May 23,
2007),
“Although [c]omplainant possesses federal registrations for the marks … the rights conferred by . . . USPTO are limited to the distinctive graphical manner in which the marks are actually depicted and do not confer exclusive rights to the [mark] in other forms and styles and most certainly do not confer exclusive rights in the common, descriptive phrase [of the mark].” (Emphasis added.”.
The domain name is not identical to the trademark, as it includes the letters “OK”, which the trademark does not and the trademark includes a city skyline which the domain name does not. Nor does the Panel accept on the balance of probabilities that the domain name is confusingly similar to the trademark. They are clearly similar, but all internet users would have to assume that the letters “OK” in the domain name meant something and were included in the domain name for some purpose and most internet users in the USA would probably assume that the letters stood for Oklahoma and that the domain name therefore related to a business in that State, which the trademark does not, at least on its face. Internet users would therefore not be confused between the two but would probably conclude that they related to different entities, only one of which was a business operating principally in Oklahoma. The domain name is therefore neither identical or confusingly similar to the trademark relied on.
Complainant has therefore not established the first of the three elements that it must establish. The Complaint fails for that reason.
Lest it be said, however, that this result is based on a mere
technicality, the Panel will also deal with all of the substantive issues
in the case, as it will be seen that Complainant would also fail on
those more substantial grounds even if it had succeeded on the first
element.
It is now well established that 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.”).
The Panel finds that Complainant has not made out a prima facie case, for the following reasons. The section of Complainant’s submission on this issue is three lines of type which recite as follows:
“The CityWideOK domain name is confusingly similar to that of Complainant, GoCityWide.com. Respondent has no rights or legitimate interest regarding that domain name, and is being used in bad faith.”
Neither of those statements shows that Respondent does not have a right or legitimate interest in the domain name and on that basis alone they do not make out a prima facie case, which is fatal to the claim. SeeTerminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)).
However, Complainant may say that its case is made out by other allegations elsewhere in the Complaint. The Panel does not agree. Complainant does not say anywhere in its material when it started its business and in particular when it started its business in Oklahoma, if in fact this has ever occurred, of which there is also no evidence. The Panel therefore has to rely on the evidence of Respondent and any reply the Complainant gives to that evidence. Respondent’s case is that it wanted to start its cleaning business which would be conducted in Oklahoma and therefore chose a domain name that reflected that the business was in that State. Respondent’s case is that it has been doing business in Oklahoma under the name “City Wide” since 2004, registered a state trademark with the State of Oklahoma, including the words City Wide, in April 2005 and registered the domain name which is the subject of this proceeding on March 26, 2008. In the absence of any other evidence the Panel concludes that Respondent has been in business under the name City Wide since 2004.
So far as Complainant is concerned, there is no evidence from the company itself, but Respondent says that Complainant ran its business in Kansas City, Kansas for many years, but that there is no public record of its ever having conducted business in Oklahoma before 2015 and that, at best, Complainant, did not file for a federal trademark for CITY WIDE until February 7, 2008, a trademark that was not registered until March 17, 2009.
Complainant did not make any attempt to adduce evidence to rebut these allegations by Respondent and the Panel therefore leans in the direction of accepting Respondent’s version of the facts.
The significance of these dates is that they show that when Respondent registered the disputed domain name, a domain name that on its face was intended to relate to a business in Oklahoma, it was reflecting the fact that it already was in business in Oklahoma and under the name City Wide. In other words, the registration of the domain name not only predated the time when Complainant started doing business in Oklahoma but was reflecting a name and locality that identified Respondent’s own business. Panels have found that the respondent has rights and a legitimate interest in the domain name when the domain name reflects the respondent’s company name. See, e.g., VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000); see also Modern Props, Inc. v. Wallis, FA 152458 (Forum June 2, 2003) (finding that as the respondent had registered its domain name as its business identity with the New York County Clerk a month after registering the domain name and then conducted his prop rental business under that name, it had demonstrated rights and legitimate interests in the domain name). The panel finds that such a principle fairly describes Respondent’s position in the present case, where it has registered a domain name that reflects the fact that it was already in business under that name. On that basis, Respondent had a right to register the domain name, as it consisted of Respondent’s business name and it has a legitimate interest in the domain name which reflects its business name and, by implication, that the business is in Oklahoma.
Respondent also submits that Complainant does not have a monopoly on the term “City Wide” as it is a generic term that is widely used on the internet. Respondent submits that an internet search of the terms shows extensive use of the term in other domain names. See Resp., p.5. “[A] respondent may have a legitimate interest in a domain name if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word.” Walsh Bishop Assocs. v. Honggi, Honggi Kim, FA 907521 (Forum Mar. 6, 2007). Complainant has not sought to rebut Respondent’s submissions or to introduce any evidence to the contrary. Therefore, the Panel determines that Respondent has rights and legitimate interests in <citywideok.com> because the domain name is comprised of generic terms as well as reflecting Respondent’s business name. In addition, it must be said that there is no evidence that Respondent has done anything other than use the words “City Wide” in their generic sense, without targeting Complainant or acting towards it in any improper way.
Whilst on this point, Complainant alleges in substance, that
Respondent’s owner has had prior business dealings with
Complainant, has “pilfered” its name and trade dress, that the
disputed domain name was chosen to create confusion within the
industry and divert customers from Complainant’s web address,
www. gocitywide.com. Respondent has denied these allegations and
has given a plausible version of events in its Response to support its
position. Complainant has not replied to the Response and the Panel
therefore does not accept Complainant’s case on the evidence
available on those issues.
Complainant has thus not made out a prima facie case that
Respondent has no rights or legitimate interests in the disputed
domain name. If it has, Respondent has rebutted that case.
Complainant has therefore not established the second of the three
elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was not registered and used in bad faith. That is so for the following reasons.
First, the Panel has already held that Respondent had a right or legitimate interest in the domain name, as it registered a domain name that reflected the business name under which it had previously conducted the business and the domain name consisted of generic words used in their generic sense without any targeting of Complainant. That being so, the registration of the domain name can hardly be said to have been in bad faith and the Panel holds that it was not in bad faith. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Secondly, the Panel finds that the registration and use of the domain name was not contrary to any of the specific factors listed in Policy ¶ 4(b), which is a list of factors which, if established, show bad faith registration and use. 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); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)). On the facts of the present case, it is more probable that Respondent, first, did not register or use the domain name with the intention of selling it to Complainant, but rather with the intention of using it for its own business that it was already conducting. Secondly, it is more probable that Respondent did not intend to prevent the Complainant from reflecting its CITY WIDE mark in a domain name, especially as that mark was not registered until 12 months after the domain name (although it had filed in February 2008).
Thirdly, Respondent clearly did not register the domain name to disrupt Complainant’s business, as Complainant had no business to disrupt in Oklahoma in March 2008 and the domain name had a definite Oklahoma cachet. Fourthly, there is no evidence at all that Respondent intended to create confusion and no evidence that any confusion has been caused. Indeed, Respondent’s website makes it clear that it is a business” … in the Greater Tulsa area…” and it is difficult to see how this could cause confusion about a business outside Tulsa. So, the case does not come within any of the specific criteria in paragraph 4(b) of the Policy. Nor is there any indication of bad faith in the general sense and it seems to the Panel highly unrealistic to characterize Respondent’s conduct as bad faith when it was merely registering and using the domain name to identify its own business in Oklahoma.
Next, as in so many other domain name cases, it must be said here that it is not sufficient to make allegations, especially as serious as an allegation of bad faith, but that allegations must be supported by evidence. This is clearly stated in the UDRP and in any case it is common sense. Respondent argues that Complainant’s mere assertion that it registered the <citywideok.com> domain name in bad faith insufficient to proving bad faith under Policy ¶ 4(a)(iii) and the Panel agrees. Indeed, Complainant tendered no evidence other than its trademark, which in any event shows that it was registered 12 months after the domain name. “Mere belief and indignation by Complainant that Respondents have registered and are using the Domain Name in bad faith are insufficient to warrant the making of such a finding in the absence of conclusive evidence.” Loris Azzaro BV, SARL v. Asteri, D2000-0608 (WIPO Sept. 4, 2000). Respondent submits that the disputed domain name does not intentionally attract internet users for Respondent’s commercial gain by creating confusion with Complainant’s business. Where the domain name is comprised of a generic term, it is difficult to conclude that there was a deliberate attempt to confuse on behalf of the respondent, and “[i]t is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them.” Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Forum Feb. 13, 2001). Furthermore, “[a] respondent does not register or use a disputed domain name in bad faith if the terms of a complainant’s mark are of common usage and the respondent operates a business that could reasonably be marketed under the disputed domain name.” Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Forum Mar. 1, 2007). In the instant case, the Panel concludes that Respondent is not using the disputed domain name in bad faith.
Moreover, in the present case there was an additional obligation on Complainant to show at least some evidence of bad faith rather than make mere allegations. That is because Complainant’s case is that Respondent “pilfered” the spelling of Complainant’s mark and created “confusion with the Complainant’s mark”. This allegation cannot be supported without evidence. But Complainant has never had a trademark for CITY WIDE, as the trademark granted to it disclaimed any exclusive right to use CITY WIDE other than in the diagram forming the entirety of its trademark. Moreover, the words are clearly generic, making it unlikely that they could be trademarked. There was therefore an obligation on Complainant to show why Respondent was acting in bad faith in using the two generic words “city wide” to describe its business, as so many other business owners have done.
Accordingly, no case has been made out on the evidence that Respondent either registered or used the domain name in bad faith.
Complainant has thus not established the third of the three elements that it must establish to make out its case.
REVERSE DOMAIN NAME HIJACKING
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 <citywideok.com> domain name REMAIN WITH Respondent.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 30, 2017
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