Angie's List, Inc. v. HD Roofing and Construction / HD Roofing and Construction, LLC.
Claim Number: FA2203001988867
Complainant is Angie's List, Inc. (“Complainant”), represented by David Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is HD Roofing and Construction / HD Roofing and Construction, LLC. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <angiroofing.com>, registered with GoDaddy.com, LLC.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 18, 2022. The Forum received payment on March 18, 2022.
On March 22, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <angiroofing.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 23, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 12, 2022 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@angiroofing.com. Also on March 23, 2022, 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 April 18, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 provides contractor reviews and services online. Complainant has rights in the ANGI, ANGI ROOFING, ANGIE’S LIST, ANGI HOME and ANGI HOMESERVICES marks through registrations with various trademark agencies, e.g. the European Union Office of Harmonization in the Internal Market (“OHIM”) and the United States Patent and Trademark Office (“USPTO”). Respondent’s <angiroofing.com> domain name is confusingly similar to Complainant’s marks.
Respondent lacks rights and legitimate interests in the <angiroofing.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized or licensed Respondent to use its marks in the domain name. Respondent does not use the domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead offers parked, pay-per-click links on the domain name’s resolving website.
Respondent registered and uses the <angiroofing.com> domain name in bad faith on the day after Complainant registered the business name Angi Roofing, LLC with the Delaware Secretary of State. Respondent attracts internet users for commercial gain to the domain name’s resolving website, which hosts parked, pay-per-click links. Respondent registered the domain name with actual knowledge of Complainant’s rights in its marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has pending applications to register the marks ANGI and ANGI ROOFING with the USPTO. However, as noted in the WIPO Jurisprudential Overview 3.0, paragraph 1.1.4: “A pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i)”. Complainant has not provided evidence of common law rights in any of its claimed marks.
Although several of Complainant’s marks were registered after the registration of the <angiroofing.com> domain name, for the purposes of the first element it is sufficient that Complainant has rights in a mark at the time of filing the Complaint. See WIPO Jurisprudential Overview 3.0, paragraph 1.1.3.
Several of Complainant’s marks were registered by a different entity. In accordance with the WIPO Jurisprudential Overview 3.0, paragraph 4.8, the Panel has searched the relevant trademark registers and ascertained that those marks have been assigned to Complainant.
Complainant has shown that it has rights in the ANGI HOME, ANGI HOMESERVICES and ANGIE’S LIST marks through registrations with various trademark agencies (e.g. ANGI HOME, United Kingdom Reg. No. UK00003690540, registered December 10, 2021; ANGI HOMESERVICES, OHIM Reg. No. 018428220, registered October 30, 2021; and ANGIE’S LIST, USPTO Reg. No. 3,224,630, registered April 3, 2007). The Panel finds Respondent’s <angiroofing.com> domain name to be confusingly similar to each of these marks, since the addition of the word “roofing” to a minor misspelling of ANGIE, the distinctive element of each mark, is insufficient to distinguish the domain name from any of the marks. The inconsequential “.com” generic top-level domain (“gTLD”) may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <angiroofing.com> domain name was registered on April 27, 2021, many years after Complainant registered its ANGIE’S LIST mark No. 3,224,630 with the USPTO and the day after Complainant registered the business name Angi Roofing, LLC with the Delaware Secretary of State. It resolves to a website with pay-per-click links to services directly competitive with those of Complainant, including “Roof Repairs”, “Remodeling”, “Roof Roofers,” “Concrete Contractor,” “Building Contractors”, and “Roofing Contractors.”
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <angiroofing.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent 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 Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was aware of Complainant’s ANGIE’S LIST mark and was likely to have been aware of Complainant’s Angi Roofing, LLC business name when Respondent registered the <angiroofing.com> domain name and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s website and of the goods promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
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 <angiroofing.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: April 19, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page