Joe Gregory and The Brake Squad, Inc. v. STEPHEN NEWMAN
Claim Number: FA1707001740457
Complainant is Joe Gregory and The Brake Squad, Inc. (“Complainant”), Virginia, USA. Respondent is STEPHEN NEWMAN (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brakesquad.com>, registered with eNom, 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 18, 2017; the Forum received payment on July 18, 2017.
On July 18, 2017, eNom, LLC confirmed by e-mail to the Forum that the <brakesquad.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the names. eNom, LLC has verified that Respondent is bound by the eNom, 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 July 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 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@brakesquad.com. Also on July 20, 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 August 8, 2017.
On August 15, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 provides mobile brake repair services in Fairfax Virginia, USA. Complainant uses THE BRAKE SQUAD mark in conjunction with its business practices. Complainant registered THE BRAKE SQUAD mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,484,134; registered Feb. 18, 2014 based upon a first use in commerce date of April 9, 2012). Respondent’s <brakesquad.com> is confusingly similar to THE BRAKE SQUAD mark because it incorporates the mark in its entirety, eliminating the word “the.”
Respondent does not have rights or legitimate interests in <brakesquad.com>. Respondent is not commonly known as <brakesquad.com>. Respondent’s <brakesquad.com> directs internet users to Respondent’s website, <brakemasters.net>, which provides identical services to Complainant’s business.
Respondent registered and is using <brakesquad.com> in bad faith. Respondent registered <brakesquad.com> shortly after Complainant started doing business in April 2012. The disputed domain name diverts internet users looking for Complainant’s business to Respondent’s business website and prevents Complainant from reflecting its mark on the internet. Complainant has offered to purchase the <brakesquad.com> domain name. However, Respondent refuses to sell the domain. Respondent registered <brakesquad.com> with actual knowledge of Complainant and its rights to THE BRAKE SQUAD mark.
B. Respondent
Respondent operates a mobile brake repair service under the name “Brake Masters Mobile Brake Repair Service” and uses the <brakemasters.net> domain name in conjunction with its business practices. Respondent is the current owner of <brakesquad.com>. The Panel notes that Respondent registered <brakesquad.com> on June 18, 2012.
Respondent established its business in 1987, predating Complainant’s business by twenty-five years. Respondent has registered multiple domain names relating to mobile repair for “possible use later and to protect my own Domain Name.” Respondent has never used Complainant’s THE BRAKE SQUAD mark in any marketing materials, thus not creating any confusion between Respondent’s and Complainant’s businesses.
Respondent would consider selling <brakesquad.com> to Complainant if Complainant makes a formal monetary offer. Respondent’s <brakesquad.com> is not infringing on Complainant’s THE BRAKE SQUAD mark because the disputed domain name is inactive with no demonstrable intent to activate it.
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.
Complainant provides mobile brake repair services in Fairfax Virginia, USA. Complainant uses THE BRAKE SQUAD mark in conjunction with its business practices. Complainant claims it registered THE BRAKE SQUAD mark with the USPTO (e.g., Reg. No. 4,484,134; registered Feb. 18, 2014 based upon a first use in commerce date of April 9, 2012). The consensus among panels is that registrations with USPTO are sufficient to show rights in a mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy
¶ 4(a)(i) and its vested interests in a mark. . . .”. Therefore, this Panel finds that Complainant’s USPTO registration is sufficient to show rights in THE BRAKE SQUAD mark.
Complainant contends that Respondent’s <brakesquad.com> is confusingly similar to THE BRAKE SQUAD mark because it incorporates the mark in its entirety, eliminating the word “the.” Removing “the” from a complainant’s mark does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See The Men’s Wearhouse, Inc. v. BLADMIR BOYIKO, fa 1654753 (Forum Feb. 3, 2016). The Panel therefore finds that Respondent’s <brakesquad.com> is confusingly similar to Complainant’s THE BRAKE SQUAD mark.
Complainant contends that Respondent does not have rights or legitimate interests in <brakesquad.com>. In support of its contention, Complainant demonstrates that Respondent is not commonly known as <brakesquad.com>. WHOIS information associated with this case identifies Respondent as “STEPHEN NEWMAN.” A respondent is not commonly known by the disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent is commonly known by the disputed domain name. See e.g., Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Therefore, because “nothing in [Respondent’s] WHOIS information implies that [Respondent] is ‘commonly known by’ the disputed domain name,” the Panel concludes that Respondent is not commonly known by <brakesquad.com>.
Complainant argues that Respondent’s <brakesquad.com> directs internet users to Respondent’s website, <brakemasters.net>, which provides identical services to Complainant’s business. Panels have found that a respondent is not using domain names for a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, where the names divert Internet users to a website that offers services which compete with those offered by the complainant under its marks. See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003). The Panel finds that Respondent does not have rights or legitimate interests in <brakesquad.com> pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Thus, Complainant has also satisfied ¶ 4(a)(ii) of the Policy.
Complainant asserts that Respondent registered and is using <brakesquad.com> in bad faith. Respondent’s <brakesquad.com> redirects to Respondent’s business website <brakemasters.net>. Complainant contends that Respondent registered <brakesquad.com> shortly after Complainant started doing business in April 2012. Complainant argues that the disputed domain name diverts internet users looking for Complainant’s business to Respondent’s business website and prevents Complainant from reflecting its mark on the internet. Moreover, Complainant asserts, and this Panel finds, that the disputed domain name diverts internet users looking for Complainant’s business to a website in direct competition with Complainant. Where “[r]espondent is appropriating [c]omplainant’s mark to divert [c]omplainant’s customers to [r]espondent’s competing business[,]” panels have found that this type of “diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).” DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005).
The Panel also finds that Respondent registered <brakesquad.com> with actual knowledge of Complainant and its rights to THE BRAKE SQUAD mark. “Respondent’s registration of the disputed domain name with knowledge of [c]omplainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).” Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Forum May 9, 2006). Because the link between Complainant’s mark and the content advertised on Respondent’s website is obvious, and since both Complainant and Respondent are located in the same city of Fairfax, Virginia, the Panel finds that Respondent “must have known about the Complainant’s mark when it registered the subject domain name.” Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002).
Thus, Complainant has also satisfied 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 <brakesquad.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: August 24, 2017
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