BSH Home Appliances Corporation v. Tereasa Parker / Thermador Repair
Claim Number: FA1704001725148
Complainant is BSH Home Appliances Corporation (“Complainant”), represented by Jaime Rich Vining of Friedland Vining, P.A., Florida, USA. Respondent is Tereasa Parker / Thermador Repair (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thermador-repair-co.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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 4, 2017; the Forum received payment on April 4, 2017.
On April 5, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thermador-repair-co.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 April 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 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@thermador-repair-co.com. Also on April 5, 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 May 1, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
Complainant, BSH Home Appliances Corporation, is a global appliance manufacturer and distributor. In connection with its business, Complainant uses the THERMADOR trademark. Complainant has rights in the THERMADOR mark as a result of registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,144,768, registered Dec. 30, 1980) and other trademark agencies throughout the world. Respondent’s <thermador-repair-co.com> is confusingly similar to the THERMADOR mark because it incorporates the mark in its entirety merely inserting hyphens, the descriptive words ‘repair’ and ‘co’, and the “.com” generic top-level domain (“gTLD”).
Respondent, Tereasa Parker / Thermador Repair, has no rights or legitimate interests in <thermador-repair-co.com>. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the THERMADOR mark. Respondent operates a business offering repair services for various appliances including Complainant’s appliances, and using Complainant’s THERMADOR mark. Respondent’s use of Complainant’s mark to suggest a non-existent affiliation creates confusion among Internet users seeking Complainant’s services. Respondent use of the domain name does not amount to a bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent has registered and used the domain name <thermador-repair-co.com> in bad faith. Two previous adverse UDRP findings against Respondent show that the registration and use of the disputed domain name is part of a pattern of bad faith registration and use per Policy ¶ 4(b)(ii). Respondent also disrupts Complainant’s business by using Complainant’s trademark to sell repair services for competitive brands and divert Internet users to Respondent’s business pursuant to Policy ¶ 4(b)(iii). By presumably profiting by operating a repair service, Respondent is using the disputed domain for commercial gain; therefore, Respondent has displayed bad faith under Policy ¶ 4(b)(iv). Finally, Respondent registered the disputed domain name with full knowledge of Complainant’s prior use of, rights in and goodwill associated with the THERMADOR mark. Actual knowledge is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, BSH Home Appliances Corporation, is a global appliance manufacturer and distributor. Complainant has rights in the THERMADOR mark as a result of registration with the USPTO (Reg. No. 1,144,768, registered Dec. 30, 1980) and other trademark agencies throughout the world.
Tereasa Parker of “Appliance 247” registered the <thermador-repair-co.com> domain name on February 6, 2017. Since 2016, two prior panels have transferred the domains <thermador-dacor-repair-center.com>, <thermadorrepair.biz>, <thermadorappliances-repair.com>, < thermador-appliances-repairs.com> and <thermador-appliance-repairs.com> from Appliance 247 to Complainant. See BSH Home Appliances Corp. v. Appliance Repair 247, D2016-0430 (WIPO April 10, 2016) and BSH Home Appliances Corp. v. Seren Keltner / Appliance Repair 247, FA 1715756 (Forum March 21, 2017). On March 3, 2017, Complainant served a formal cease and desist letter on Respondent demanding the voluntary transfer of the <thermador-repair-co.com> domain name. Following receipt of the letter, Respondent updated the WHOIS information to reflect the “Registrant Organization” as “Thermador Repair.”
Respondent’s <thermador-repair-co.com> is confusingly similar to the THERMADOR mark.
Respondent has no rights or legitimate interests in <thermador-repair-co.com>. Respondent operates a business offering repair services for various appliances including Complainant’s appliances.
Respondent has registered and used the domain name <thermador-repair-co.com> in 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.
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 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 (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 has rights in the THERMADOR mark under Policy ¶ 4(a)(i) as a result of registration with the USPTO and other trademark authorities around the world. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office).
Respondent’s <thermador-repair-co.com> is confusingly similar to the THERMADOR mark because it incorporates the mark in its entirety. The disputed domain merely inserts hyphens, the descriptive words ‘repair’ and ‘co’, and the “.com” gTLD.
Respondent has no rights or legitimate interests in <thermador-repair-co.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized Respondent to use the THERMADOR mark. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). The WHOIS information identifies the initial registrant as “Tereasa Parker, Appliance 247” and the current registrant as “Tereasa Parker, Thermador Repair.” See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS was changed after Respondent received a cease-and-desist letter from Complainant — a practice defined as “cyberfighting.” See France Billet v. Privacy Administrator, Anonymize, Inc., D2015-1641 (WIPO Nov. 15, 2015) (describing “cyberfighting” as a practice in which “a respondent transfers the domain name to a new registrant in order to avoid a complainant initiating proceedings in relation to the domain name.”).
Respondent does not have any rights or legitimate interests in the <thermador-repair-co.com> domain name under Policy ¶¶ 4(c)(i) or (iii). Respondent is using Complainant’s marks on the resolving website of the <thermador-repair-co.com> domain name to divert internet users to promote Respondent’s competitive services. See Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
Respondent has registered and used the <thermador-repair-co.com> domain name in bad faith. Two previous adverse UDRP findings against Respondent show that the registration and use of the disputed domain name is part of a pattern of bad faith registration and use per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA 1464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Therefore, the Panel finds that a bad faith pattern exists pursuant to Policy ¶ 4(b)(ii).
Respondent registered the disputed domain name for the primary purpose of disrupting Complainant’s online retail business. Respondent is using the domain name to promote its repair service in competition with Complainant. Panels have held that using a domain name featuring the complainant’s mark to directly compete with the complainant is bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent is attempting to pass itself off as Complainant in a bad faith attempt to attract Internet users for commercial gain under Policy ¶ 4(b)(iv). Respondent’s use of the THERMADOR mark, in conjunction with the confusingly similar domain name, creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Respondent had actual notice of its rights in the THERMADOR mark when it registered the <thermador-repair-co.com> domain name, and, therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007).
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 <thermador-repair-co.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 15, 2017
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