Steri-Clean, Inc. v. Jake Soesa / Stericlean
Claim Number: FA2306002048362
Complainant is Steri-Clean, Inc. (“Complainant”), represented by Gerben Perrott PLLC, District of Columbia, USA. Respondent is Jake Soesa / Stericlean (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stericleanoz.com>, registered with Google 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on June 9, 2023; Forum received payment on June 9, 2023.
On June 9, 2023, Google LLC confirmed by e-mail to Forum that the <stericleanoz.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 June 13, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 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@stericleanoz.com. Also on June 13, 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.
On June 13, 2023, Respondent sent an informal email to Forum. However, having received no substantive response from Respondent, Forum subsequently transmitted to the parties a Notification of Respondent Default.
On July 11, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Steri-Clean, Inc. is an Idaho corporation providing clean up and cleaning services. Complainant asserts rights in the trademark STERI-CLEAN based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,216,977, registered October 2, 2012). The <stericleanoz.com> domain name is identical or confusingly similar to Complainant’s Marks because it merely adds the letters “oz” to the end of the STERI-CLEAN mark as well as the generic top level domain (“gTLD”) “.com”.
Respondent has no legitimate interests in the <stericleanoz.com> domain name which was registered on May 15, 2023. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the STERI-CLEAN mark. Additionally, as the disputed domain name does not resolve to any website, Respondent does not use the disputed domain name for any bona fide offering of goods or services and it does not make a legitimate noncommercial or fair use of the domain name. Instead, Respondent is diverting Internet traffic away from Complainant’s own website at www.steri-clean.com.
Respondent registered and uses the <stericleanoz.com> domain name in bad faith. Respondent disrupts Complainant’s business and creates a likelihood of confusion to attract Internet traffic to Respondent’s website.
B. Respondent
Although Respondent has not submitted a sustantive Response in this proceeding, it sent an email to the Forum stating, in part, “we have chosen to retire the Stericleanoz domain”. The message goes on to say “We understand that this change may require adjustments from your end if you have been using or referring to the Stericleanoz domain in any way. We kindly request that you update your records accordingly and make the necessary changes to ensure seamless communication and collaboration between our organizations. If you have any concerns or require assistance during this transition period, please do not hesitate to reach out to our dedicated support team at [Redacted]. We are committed to making this process as smooth as possible for all parties involved.” It concludes with the statement “We look forward to maintaining our strong connection under our revised online identity.”
- Complainant has rights in the STERI-CLEAN trademark and the <stericleanoz.com> domain name is confusingly similar to such mark;
- No rights or legitimate interests are demonstrated where there is no evidence that Respondent is commonly known by the disputed domain name, the name does not resolve to any website, and it does not otherwise appear to be used by Respondent; and
- Respondent’s non-use of the disputed domain name indicates a likelihood that it registered and uses the domain name 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 substantive 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 STERI-CLEAN mark based upon registration with the United States Patent and Trademark Office (“USPTO”). Registration of a mark with the USPTO is most often a valid showing of rights in a mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides screenshots from the USPTO website showing the details of its registration, the Panel finds that the Complainant has rights in the STERI-CLEAN mark under Policy 4(a)(i).
Complainant argues that Respondent’s <stericleanoz.com> domain name is identical or confusingly similar to Complainant’s Marks. The addition of a few letters or a geographic term, as well as a gTLD, the different of a hyphen most often fails to sufficiently distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i) analysis. See, e.g., HDR Global Trading Limited v. Djoni Brave / CashBerry, FA 2031369 (Forum Mar 13, 2023) (Confusing similarity found where “[t]he disputed domain name <bitzibmex.com> incorporates Complainant's registered BITMEX and BMEX trademarks, adding a few letters and appending the ‘.com’ top-level domain.”); see also Christmas Place, Inc. v. Pham Dinh Nhut, FA 1597046 (Forum Feb. 16, 2015) (Finding confusing similarity where “[t]he disputed domain name incorporates Complainant’s LMCO mark in its entirety, merely adding the geographic term ‘tx’ (which stands for Texas), a hyphen, and the ‘.com’ generic top-level domain (‘gTLD’)”.). Here, the disputed domain name merely adds the letters “oz” (a colloquial term for Australia) to the end of the STERI-CLEAN mark, eliminates the hyphen, and appends the “.com” gTLD. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s 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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant claims that Respondent lacks rights or legitimate interests in the <stericleanoz.com> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the STERI-CLEAN mark. WHOIS information may inform consideration of whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Jake Soesa / Stericlean” but Respondent has submitted no evidence that it is an affiliate of Complainant’s or is actually known by the “Stericlean” name. Further, while Respondent’s has engaged with these proceedings as shown by its email to the Forum, there is no claim or evidence from either party that a relation exists between them or that Respondent is authorized to use the STERI-CLEAN mark. To the contrary, Complainant states, without objection or retort from Respondent, that “[Respondent] does not sell offer SC services and is not authorized to use the SC marks.” As such, the Panel finds that it is not possible to conclude, by a preponderance of the evidence, that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <stericleanoz.com> domain name in connection with a bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use thereof because Respondent is deceitfully attracting Internet traffic away from Complainant’s website to a non-resolving site. Use of a disputed domain name in this way fails to demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”) Here, although Complainant fails to provide evidence of Respondent’s non-resolving website, the Panel has attempted to browse to the <stericleanoz.com> domain name and has reviewed the archive.org site and found that indeed there is no content or associated site. As such, the Panel finds that Respondent fails to use the disputed domain name and has thus not made a bona fide offering of goods or services or or a legitimate noncommercial or fair use thereof under Policy ¶¶ 4(c)(i) or (iii).
Complainant claims that Respondent registered and uses the <stericleanoz.com> domain name in bad faith due to the fact that the disputed domain name exists solely to attract Internet traffic and create confusion with its STERI-CLEAN mark. Although not addressed in the Complaint, a foundational question under ¶ 4(a)(iii) is whether or not Respondent had knowledge of Complainant’s rights in its asserted mark at the time it registered the disputed domain name. Some attribution of knowledge of a complainant’s trademark, whether actual, constructive, or based upon a conclusion that a respondent should have known of the mark, is inherently prerequisite to a finding of bad faith under the Policy. See Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) (“Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration”); USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where “Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.”). Complainant asserts that its mark as acquired “substantial goodwill” and the Panel takes this as a tacit assertion that Respondent must have known of the mark at the time it registered the disputed domain name. However, Complainant’s evidence consists of screenshots of its USPTO trademark registrations and a single screenshot of its www.steri-clean.com website home screen. While this evidence may support the existence of trademark rights, it does little to show the scope or reputation of the mark. As such, the Panel must discount the claim of substantial goodwill. However, as noted above, Respondent’s email to Forum does suggest that there is some sort of prior relationship between the parties and, from this, the Panel finds it highly likely that Respondent knew of the STERI-CLEAN mark at the time that it registered the <stericleanoz.com> domain name.
Next, Complainant contends that Respondent’s <stericleanoz.com> domain name resolves to an inactive website, that it disrupts Complainant’s business, and that it “exists solely to attract Internet traffic”. The non-use of a disputed domain name may suggest bad faith under Policy ¶ 4(a)(iii) even though it is not specifically enumerated as an example under Policy ¶ 4(b). See Frank, Weinberg & Black P.L. v. Allison D’Andrea, D2013-1578 (WIPO Oct. 18, 2013) (“Paragraph 4(b)’s examples are expressly non-exclusive…”) See also Opportunity Financial, LLC v. Warut Chuaynoo, FA 1994278 (Forum June 2, 2022) (“Respondent’s failure to actively use the at-issue domain name shows bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). * * * Respondent’s passive holding of the at-issue domain name suggests Respondent’s present intent to capitalize on the confusion between the <opploansmyoffer.com> domain name and Complainant’s trademark at some time in the future.”) The Panel references its own review of the current and archived non-resolution of the disputed domain name to any website as evidence of Respondent’s inactive holding. As Respondent has provided no alternative explanation for its actions, the Panel finds that the evidence in this case weighs in favor of finding that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Further, Complainant argues that Respondent registered and uses the <stericleanoz.com> domain name in bad faith because Respondent disrupts Complainant’s business. Where the respondent uses a disputed domain name in a manner that creates confusion, the Panel may find evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Medline Industries, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1886034 (Forum Mar. 31, 2020) (“A respondent’s use of a disputed domain name to cause Internet users initial interest confusion as to affiliation with a complainant is evidence of bad faith pursuant to Policy ¶ 4(a)(iii) * * * Respondent’s use of the MEDLINE mark in its disputed domain name would lead Internet users to believe that Respondent is affiliated with Complainant, when it is not.”). As Complainant’s assertion appears to be reasonable and has not been disputed by Respondent, the Panel finds that it lends further support to the conclusion that Respondent registered and used the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stericleanoz.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: July 13, 2023
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