ServiceTitan, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2303002035846
Complainant is ServiceTitan, Inc. (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, Washington D.C., USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <servicetitian.com>, <ervicetitan.com>, <seevicetitan.com>, <sericetitan.com>, <serviceitan.com>, <servicetotan.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to Forum electronically on March 15, 2023; Forum received payment on March 15, 2023.
On March 15, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <servicetitian.com>, <ervicetitan.com>, <seevicetitan.com>, <sericetitan.com>, <serviceitan.com>, and <servicetotan.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 16, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 2023 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@servicetitian.com, postmaster@ervicetitan.com, postmaster@seevicetitan.com, postmaster@sericetitan.com, postmaster@serviceitan.com, postmaster@servicetotan.com. Also on March 16, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 names be transferred from Respondent to Complainant.
A. Complainant
The Complainant is in the productivity and management software business. Complainant asserts rights in the SERVICETITAN trademark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. no. 4,648,578, registered December 2, 2014). Respondent’s <servicetitian.com>, <ervicetitan.com>, <seevicetitan.com>, <sericetitan.com>, <serviceitan.com>, <servicetotan.com> (the Disputed Domain Names) are confusingly similar to Complainant’s SERVICETITAN trademark because they incorporate the trademark with misspellings by adding the letter “i”, replacing the letter “r” with “e”, and “i” with “o”, removing the letters “s”, “v”, “t” and adding the generic top-level domain name (“gTLD”) “.com”.
Respondent does not have rights or legitimate interests
in the Disputed
Domain Names. Respondent is not licensed or
authorized to use Complainant’s SERVICETITAN trademark and is not commonly known by the Disputed Domain
Names. Respondent also does not use the Disputed Domain Names for any bona
fide offering of goods or services or legitimate noncommercial or fair use.
Rather, Respondent attempts to install malicious software.
Respondent registered and uses the Disputed Domain Names in bad faith. Respondent offers the
Disputed Domain Names for sale. Respondent has a pattern of bad faith
registration. Respondent disrupts Complainant’s business by redirecting to a
third-party website and attempting to install malicious software. Respondent
creates a likelihood of confusion with Complainant’s business. Respondent had
actual knowledge of Complainant’s rights in the SERVICETITAN trademark.
Respondent used a privacy shield to register the Disputed Domain Names.
Respondent creates initial interest confusion. Respondent engages in
typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following national and regional trademark registrations:
U.S. national trademark registration No. 4,648,578 SERVICETITAN (word), registered December 2, 2014 for services in Intl. Class 42;
U.S. national trademark registration No. 5,451,884 SERVICETITAN (word), registered April 24, 2018 for goods and services in Intl Classes 9 and 42;
U.S. national trademark registration No. 6,222,956 SERVICETITAN (word), registered December 15, 2020 for goods and services in Intl Classes 9, 35, 36, 38, 39, 41 and 42;
European Union Trade Mark (EUTM) registration No. 018103045 SERVICETITAN (word), registered February 5, 2020 for goods and services in Intl Classes 9, 35, 36, 38, 39, 41, 42 and 45; and
Australian national trademarks registration No. 2026818 SERVICETITAN (word), registered July 31, 2019 for goods and services in Intl Classes 9, 35, 36, 38, 41, 42 and 45.
The Disputed Domain Names were registered on the following dates:
<servicetitian.com>, April 23, 2018;
<ervicetitan.com>, November 2, 2020;
<seevicetitan.com>, October 23, 2020;
<sericetitan.com>, March 29, 2018;
<serviceitan.com>, July 17, 2020; and
<servicetotan.com>, May 26, 2020.
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 asserts rights in the SERVICETITAN trademark based upon registration with the USPTO (e.g., Reg. no. 4,648,578, registered December 2, 2014) and other trademark agencies. Registration of a trademark with multiple trademark agencies is a valid showing of rights under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Since Complainant has provided evidence of registration of the SERVICETITAN mark with the USPTO, the Panel find that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the Disputed Domain Names are confusingly similar to Complainant’s SERVICETITAN trademark because they incorporate the trademark with different kinds of obvious misspellings, and adding the gTLD “.com”. The addition of letters - particularly of those that create a common misspelling - fails to sufficiently distinguish a domain name from a registered trademark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”). Therefore, the Panel find that the Disputed Domain Names are confusingly similar to Complainant’s SERVICETITAN trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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).
Complainant argues that Respondent does not have rights or legitimate interests in the Disputed Domain Names because Respondent is not licensed or authorized to use Complainant’s SERVICETITAN trademark and is not commonly known by the Disputed Domain Names. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the Disputed Domain Names lists the registrant as “Carolina Rodrigues / Fundacion Comercio Electronico.” Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends that Respondent also does not use the Disputed Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent attempts to install malicious software by redirecting to a third-party website. Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Here, Complainant provides screenshots of the Disputed Domain Names’ resolving webpages, showing the same message “Threat secured. We’ve safely aborted connection because it was infected with VBS:Malware-gen”. Thus, the Panel find that Respondent does not provide a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).
Complainant asserts that Respondent offers the Disputed Domain Names for sale. Offers to sell a disputed domain name constitute bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i))
Here, Complainant provides WHOIS information showing several of the Disputed Domain Names are available for sale for $1,299. Thus, the Panel find that Respondent registered and uses the Disputed Domain Names in bad faith under Policy ¶ 4(b)(i).
Complainant argues that Respondent has a pattern of bad faith registration from previous UDRP decisions and by registering six domain names in the instant case. Respondent’s registration of multiple domain names in the instant proceeding and prior adverse UDRP history is evidence of bad faith registration and use of the domain names under Policy ¶ 4(b)(ii). See H-D U.S.A., LLC v. zhangzongze / sweden / zhang jinxian / canada goose / harleydavidson / harley davidson, FA1410001587625 (Forum Dec. 10, 2014) (“The Panel agrees that the case relates to the same Respondent here, and Respondent’s history of bad faith suggests Respondent’s bad faith in the instant case pursuant to Policy ¶ 4(b)(ii), especially given the presence of three domain names in this proceeding that incorporate the HARLEY-DAVIDSON mark.”). Here, Complainant provides a sample of Respondent’s previous UDRP cases and claims over 540 UDRP cases have been brought against Respondent resulting in transfer and there are 6 disputed domain names in the instant case. Therefore, the Panel determine that Respondent registered and uses the Disputed Domain Names in bad faith under Policy ¶ 4(b)(i).
Complainant contends that Respondent disrupts Complainant’s business by redirecting to a third-party website and attempting to install malicious software. Use of a disputed domain name to distribute malware to Internet users’ computers indeed demonstrates bad faith under Policy ¶ 4(a)(iii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”); see also PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). As noted above, Complainant provides screenshots of the Disputed Domain Names’ resolving webpages, showing the same message “Threat secured. We’ve safely aborted connection because it was infected with VBS:Malware-gen”. Therefore, the Panel clearly find that Respondent registered and uses the Disputed Domain Names in bad faith under Policy ¶¶ 4(b)(iii) & 4(a)(iii).
Complainant argues that Respondent creates a likelihood of confusion with Complainant’s business. While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Here, Complainant provides no evidence to support this argument, but based on what is already stated above, the Panel tends to agree with the Complainant’s conclusion, and find that Respondent registered and uses the Disputed Domain Names in bad faith under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the SERVICETITAN trademark because of the fame of the trademark. Per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the use the respondent makes of the domain name. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Here, Complainant provides statistics for the business, financial and corporate information, and new articles showing the fame of the trademark. Thus, the Panel find that Respondent registered and uses the Disputed Domain Names in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent used a privacy shield to register the Disputed Domain Names. Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith under Policy ¶ 4(a)(iii). See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). Here, Complainant provides WHOIS information showing some registrant information is listed as “registration private”. Therefore, the Panel determines that Respondent registered and uses the Disputed Domain Names in bad faith under Policy ¶ 4(a)(iii).
Complainant contends that Respondent creates initial interest confusion with Complainant’s business. Initial interest confusion is in bad faith when (1) the domain name contains the complainant’s trademark in its entirety, (2) the trademark is a coined word, well-known and in use prior to the respondent’s registration of the domain name, and (3) the respondent fails to allege any good faith basis for use of the domain name. See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” its very use by someone with no connection to these products can evidence opportunistic bad faith). Here, Complainant provides no specific evidence to support this argument, but- based on the circumstances of this case – the Panel draw the conclusion that Respondent registered and uses the Disputed Domain Names in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant asserts that Respondent engages in typosquatting. Typosquatting itself is evidence of relevant bad faith registration and use under Policy ¶ 4(a)(iii). See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). As noted initially, all the Disputed Domain Names are similar to Complainant’s SERVICETITAN trademark because they incorporate the trademark with misspellings by adding the letter “i”, replacing the letter “r” with “e”, and “i” with “o”, removing the letters “s”, “v”, “t” and adding the gTLD “.com”. Thus, the Panel find that Respondent registered and uses the Disputed Domain Names in bad faith under 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 <servicetitian.com>, <ervicetitan.com>, <seevicetitan.com>, <sericetitan.com>, <serviceitan.com>, and <servicetotan.com> domain names be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 24, 2023
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