Call Pro’s, Inc. v. Jason McGuiness
Claim Number: FA2306002049046
Complainant is Call Pro’s, Inc. (“Complainant”), represented by Juna Q. Summerton of Noblitt & Newson, PLLC, Arizona, USA. Respondent is Jason McGuiness (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rooterheroscams.com>, registered with Google 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 Forum electronically on June 14, 2023. Forum received payment on June 14, 2023.
On June 14, 2023, Google LLC confirmed by e-mail to Forum that the <rooterheroscams.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 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 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@rooterheroscams.com. Also on June 19, 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.
A timely Response was received and determined to be complete on July 6, 2023.
On July 13, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Call Pro Inc., provides plumbing services. Complainant has rights in the ROOTER HERO mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <rooterheroscams.com> domain name is identical or confusingly similar to Complainant’s ROOTER HERO mark.
Respondent lacks rights and legitimate interests in the <rooterheroscams.com> domain name. Complainant has never authorized Respondent to use its trademark in the domain name. Respondent has not made preparations to use or used the domain name in connection with a bona fide offering of goods or services; is not commonly known by ROOTERHERO and does not have trademark rights in that term. Respondent had knowledge of Complainant’s mark when registering the domain name. Respondent is not using the domain name for legitimate noncommercial or fair use purposes, but rather to make defamatory statements regarding Complainant to tarnish Complainant’s mark for purposes of obtaining leverage over Complainant in a former litigation proceeding.
The website associated with the domain name may or may not offer critical comment, but Respondent deliberately registered and used the domain name to disparage Complainant's business and Complainant’s mark for purposes of obtaining leverage over Complainant in a litigation proceeding and with the intent to impart a negative commercial impact upon Complainant's mark and on Complainant. Therefore, Respondent cannot invoke the defense of legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The domain name has been registered and is being used in bad faith. Respondent registered the domain name during legal proceedings to gain commercial leverage over Complainant. On or around December 27, 2018, Respondent was a counter-claimant named in San Diego Superior Court Case No. 37-2018-00054978-CL-CO-CTL against Complainant’s predecessor-in-interest, Rooter Hero Plumbing, Inc., which filed for bankruptcy in 2020.
In an email dated February 2, 2022, Respondent admitted that he created the website to which the domain name resolves not for the purpose of providing critical commentary or other fair use purposes:
“I’m gonna be in these motherfuckers’ lives for a long time. AG complaints, bar complaints, websites like the one I made for Rooter Hero: https://rooterheroscams.com/, forums like https://www.reddit.com/r/WorkReform/, but something like /LegalReform where people get to collectively tell their stories.”
Respondent’s dispute with Complainant’s predecessor-in-interest was resolved in this bankruptcy proceeding in 2022. Accordingly, Respondent’s primary purpose in registering and using the domain name was to gain commercial leverage over Complainant in the context of a litigation proceeding; to disparage Complainant’s business and tarnish Complainant’s mark as part of a campaign of revenge.
No other legal proceedings have been commenced or terminated in connection with or relating to the domain name.
B. Respondent
Respondent is using the domain name to criticize Complainant’s previous “scams”. See Shipping Quest v. WENDY SULDA, FA1805001785542 <shippingquestscams.com>, Forum June 25, 2018 (“Use of a domain name to criticize a company is prima facie fair use.”).
All Respondent has done is aggregate public reviews from around the web. He is not using the domain name for commercial purposes. There is no bad faith here.
Complainant has failed to establish 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.
Complainant has shown that it has rights in the ROOTER HERO mark through registration of the mark with the USPTO (Reg. No. 4,131,564, registered by Rooter Hero Plumbing, Inc. on April 24, 2012 in relation to plumbing services and subsequently assigned to Complainant in 2017). Based on the usual side-by-side comparison of the domain name with the mark, the Panel finds Respondent’s <rooterheroscams.com> domain name to be confusingly similar to Complainant’s ROOTER HERO mark as it contains the entire mark and adds the term “scams”, which is insufficient to distinguish the domain name from the mark, and the inconsequential “.com” generic top-level domain (“gTLD”), which 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.
As noted in 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”).
The <rooterheroscams.com> domain name was registered on July 5, 2018. Complainant has provided a link to the website to which the domain name resolves, headed:
“Here to rob you Rooter Hero plumbing”, “Rooter Hero Reviews & Scams. Rooter Hero has a reputation as one of the least reputable and dishonest plumbing companies in Southern California.”
The website displays numerous reviews by third parties critical of Complainant or its predecessor in interest, Rooter Hero Plumbing, Inc.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.6.3:
“Where the domain name is not identical to the complainant’s trademark, but it comprises the mark plus a derogatory term (e.g., <trademarksucks.tld>), panels tend to find that the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is prima facie noncommercial, genuinely fair, and not misleading or false.”
As noted in ShippingQuest v. WENDY SULDA, FA1805001785542, (Forum June 25, 2018), cited by Respondent:
“Respondent contends it uses the <shippingquestscams.com> domain name for a “gripe site.” Use of a domain name to criticize a company is prima facie fair use. See Shell Int’l Petroleum Co. Ltd. v. Donovan, D2005-0538 (WIPO Aug. 8, 2005) (“The use of a domain name to criticize a company is prima facie fair use. The Respondent is entitled to use the Internet to use his free speech rights and express his opinion in this way, subject to other laws of course (copyright, libel, etc.).”); see also Homer TLC, Inc. v. GreenPeople, FA 550345 (Forum Oct. 25, 2005) (holding that the respondent’s use of the <homedepotsucks.com> domain name as a protest site was a legitimate noncommercial or fair use).
Prima facie, Respondent’s website appears to the Panel to be a criticism site that is noncommercial, genuinely fair, and not misleading or false. Complainant has provided no evidence to the contrary.
As to the purpose for which the domain name was registered, Complainant says Respondent registered the domain name during legal proceedings to gain commercial leverage over and to disparage Complainant and its mark. However, Annex 7 to the Complaint shows that the domain name was not registered during the legal proceedings, which commenced on October 29, 2018, almost 4 months after Respondent registered the domain name. Complainant has produced no evidence that Respondent registered the domain name for an improper purpose, such as to gain commercial leverage over Complainant.
Accordingly, the Panel finds that Complainant has failed to establish a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the domain name.
Complainant has failed to establish 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, i.e.
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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.
There is no evidence before the Panel of any of the above circumstances, nor of any other circumstances that would support a conclusion of bad faith registration and use of the domain name by Respondent. It is clear that Respondent registered the domain name as a criticism site, prompted by his and his wife’s experience with Complainant’s predecessor-in-interest. The nature of the domain name, incorporating the word “scams” after the trademark, makes this clear to Internet users, as does the content of the website.
The Panel does not accept that Respondent’s email of February 2, 2022 amounts to an admission that he created his website not for the purpose of providing critical commentary or other fair use purposes. To the contrary, the email indicates that he created the website for people “to collectively tell their stories”.
Complainant has failed to establish this element.
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <rooterheroscams.com> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: July 17, 2023
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