URS DEFAULT DETERMINATION
ServiceMaster Brands, L.L.C. et al. v. Private by Design, LLC et al.
Claim Number: FA1707001741130
DOMAIN NAME
<servicemaster.design>
PARTIES
| Complainant: ServiceMaster Residential/Commercial Services Limited Partnership of Memphis, TN, United States of America | |
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Complainant Representative: Butler Snow LLP
Benjamin L Mitchell of Ridgeland, MS, United States of America
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| Respondent: Private by Design, LLC Whois Privacy of Sanford, NC, US | |
REGISTRIES and REGISTRARS
| Registries: Top Level Design, LLC | |
| Registrars: Porkbun, LLC |
EXAMINER
| 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 Examiner in this proceeding. | |
| Ms. Kateryna Oliinyk, as Examiner |
PROCEDURAL HISTORY
| Complainant Submitted: July 22, 2017 | |
| Commencement: July 24, 2017 | |
| Default Date: August 8, 2017 | |
| Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules"). |
RELIEF SOUGHT
| Complainant requests that the domain name be suspended for the life of the registration. |
STANDARD OF REVIEW
| Clear and convincing evidence. |
FINDINGS and DISCUSSION
| Findings of Fact: Findings of Fact: Under URS 9.1. the evidences will be the materials submitted with the Complaint and the Response, and those materials will serve as the entire records used by the Examiner to make a Determination. URS 8.2. reads that the burden of proof shall be clear and convincing evidences. Under URS 8.6. if the Examiner finds that all three standards provided for by URS 8.1. are satisfied by clear and convincing evidences and that there is no genuine contestable issue, then the Examiner shall issue a Determination in favour of the Complainant. Under URS 6.1. if at the expiration of the 14 Calendar Day Response period (or extended period if granted), the Registrant does not submit an answer, the Complaint proceeds to Default. Further URS 6.3. reads that all Default cases proceed to Examination for review on the merits of the claim. Complainant holds the valid U.S. Trademark Registration No. 3,418,024 (registration date April 29, 2008) claiming first use in commerce as of Jan. 1, 1999. The mark consists of the words “SERVICEMASTER CLEAN” in the colour turquoise are in the foreground overlying a triangle in the color yellow. The element “clean” is disclaimed. The Claimant provided the evidences of the use of the mark in the business of providing franchises for the provision of residential and commercial cleaning and restoration services. The Complaint uses the mark in the form as it is registered, as well the in the form that differs from the registered mark but which does deteriorate the overall impression created by the mark. Thus, “SERVICEMASTER” trademark presents a separate and distinct commercial impression for the services in respect of which the mark is used by the Complainant. The mark was registered and used well before delegation date of the contested domain name <servicemaster.design>. The Complainant contemplates that the Respondent, the former employee of a ServiceMaster franchisee in Omaha, Nebraska, registered the domain name, appropriating the SERVICEMASTER trademark, to divert internet users to the conflicting website which constitutes the website offering the services which constitute the primarily business of the trademark owner. |
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Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark: Determined: Finding for Complainant The registered domain name <servicemaster.design> fully incorporates the most distinctive word element of Complainant’s mark “SERVICEMASTER” for which the Complainant holds valid national registration and that is in current use. It is well accepted that the top level domain is irrelevant in assessing identity or confusing similarity, thus .design is of no consequence here. Respectively, the Examiner finds that the contested domain name is confusingly similar with the Complainant’s “SERVICEMASTER” mark under URS 1.2.6.1. (i). [URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name. Determined: Finding for Complainant The Examiner determines that the Respondent is not commonly known by the “SERVICEMASTER” name and that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use Complainant’s “SERVICEMASTER” mark in a domain name or otherwise. The domain name is used for the commercial purpose for offering the services identical to the services to which the core Complainant’s business refers and for which the name “SERVICEMASTER” has acquired the secondary meaning as the source of origin of the respective services. Therefore, the Examiner finds that the Complaint meets URS requirement of 1.2.6.2.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
Determined: Finding for Complainant The bad faith exists where the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. By visiting the site, customers will most likely expect to reach the website searching for the service which the Complainant provides locally, within the state. The Respondent who has never been granted the right to use the “SERVICEMASTER” mark and who does not have any affiliation ties with the Complainant is using the confusion in the minds of consumers over the use of the “SERVICEMASTER” mark to divert users to the own website. Thus, the Examiner founds the actionable initial interest confusion in this case. Yet the more, the Defendant, inasmuch as it has not been proved the contrary, as the former employee of the Complainant’s franchisee, has the constructive knowledge of the trademark. Thus, the Examiner finds the contested domain name to be misleading that supports finding of bad faith registration under URS 1.2.6.3.(d). FINDING OF ABUSE or MATERIAL FALSEHOOD The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. The Examiner finds as follows:
DETERMINATION
After reviewing the parties’ submissions, the Examiner determines that the Complainant
has demonstrated all three elements of the URS by a standard of clear and convincing
evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for
the duration of the registration:
|
Ms. Kateryna Oliinyk Examiner
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