J.M. Windows and Gutters, LLC v. Ryan Barrie
Claim Number: FA1401001541703
Complainant is J.M. Windows and Gutters, LLC (“Complainant”), represented by Eric Misterovich of Revision Legal, Michigan, USA. Respondent is Ryan Barrie (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jmwindowsandgutters.com>, registered with 1&1 Internet AG.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2014; the National Arbitration Forum received payment on January 31, 2014.
On February 3, 2014, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <jmwindowsandgutters.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2014 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@jmwindowsandgutters.com. Also on February 5, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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
Policy ¶ 4(a)(i):
Policy ¶ 4(a)(ii):
Policy ¶ 4(a)(iii):
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, J.M. Windows and Gutters, LLC, provides window cleaning, gutter cleaning, and gutter repair and installation services. Complainant has used the JM WINDOWS AND GUTTERS mark since August 18, 2007. Complainant has recently filed for trademark protection for a similar JM WINDOWS AND GUTTERS mark with the United States Patent and Trademark Office ("USPTO") (Serial No. 86,170,009 submitted Jan. 20, 2014). Complainant has used its mark extensively in its local area and has become well known in the areas around Wauconda, Illinois. Complainant has spent considerable sums of money in the specific areas of online and keyword advertising.
Respondent, Ryan Barrie, registered the <jmwindowsandgutters.com> domain name on June 22, 2010. Respondent had, prior to this dispute, used the JM WINDOWS AND GUTTERS mark to provide goods through its own business. Respondent’s business through the <jmwindowsandgutters.com> domain name is directly competing in the same specific geographic area as Complainant’s business.
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(e), 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 (Nat. Arb. 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 does not have a registered trademark; therefore, Complainant must establish common law rights in the JM WINDOWS AND GUTTERS mark. See, e.g., Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant has used the JM WINDOWS AND GUTTERS mark since August 18, 2007, in its business of window cleaning, gutter cleaning, and gutter repair and installation services. Complainant has promoted its mark extensively in its local area and has become well known in the areas around Wauconda, Illinois. Complainant has spent considerable sums of money on online and keyword advertising. Therefore, Complainant has made a sufficient showing of secondary meaning to establish common law rights under Policy ¶ 4(a)(i). See, e.g., Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
Disregarding the deletion of spacing and the addition of the gTLD “.com,” Respondent’s <jmwindowsandgutters.com> domain name is identical to Complainant’s JM WINDOWS AND GUTTERS mark under 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 (Nat. Arb. 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).
Respondent is not commonly known by the <jmwindowsandgutters.com> domain name under Policy ¶ 4(c)(ii). The WHOIS information identifies Respondent as “Ryan Barrie” and the Illinois Secretary of State’s office does not have any record of another business named “JM Windows and Gutters.” Respondent uses the phrase JM WINDOWS AND GUTTERS on its website, but there is no evidence suggesting that Respondent is actually known by that name. See, e.g., PetroSkills, LLC v. Domain Privacy Service, FA1302001484744 (Nat. Arb. Forum April 5, 2013) (finding that there is an element of good faith incorporated in a respondent’s assertion that it is “commonly known” as a domain name, because “[t}he obvious intent of ¶4(c)(ii) is to afford a viable defense for a respondent who registers a domain name incorporating either his own personal name or a business or trade name. . .[t]his defense does not extend to a respondent who registers and uses a domain name that incorporates the name or mark of another with the intent to trade on the fame or reputation of that other.”).
Respondent had, prior to this dispute, used the JM WINDOWS AND GUTTERS mark to provide goods through its own business. Complainant notes that it has received complaints from consumers who believe that Respondent is in fact associated with Complainant’s own business. Complainant claims that Respondent has no right to operate a competing business through the <jmwindowsandgutters.com> domain name when it is at best a junior user of a trademark. Respondent is using the domain name to operate a competing window and gutter maintenance service. The Panel finds that Respondent’s operations are neither bona fide offerings of goods or services, nor legitimate noncommercial or fair uses pursuant to Policy ¶¶ 4(c)(i), (iii), as Respondent is a junior user of the mark but is competing directly with the senior user, Complainant. See, e.g., Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Respondent’s business through the <jmwindowsandgutters.com> domain name is directly competing in the same specific geographic area as Complainant’s business. This amounts to disruption of Complainant’s business which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See, e.g., Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Respondent is using a derivative of Complainant’s own mark to promote its competing services through the <jmwindowsandgutters.com> domain name. Respondent profits off a likelihood of confusion among consumers. This is evidence of bad faith under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (Policy ¶ 4(b)(iv) bad faith found where the respondent actions were likely to create consumer confusion).
Respondent has actual knowledge of Complainant’s operations as they both operate in the same field of business and both run their businesses in the area immediately around Wauconda, Illinois. See, e.g., Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jmwindowsandgutters.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 13, 2014
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