DECISION

 

J.G., Inc. v. Jon Goodhart / Just Like New Overspray Removal

Claim Number: FA2403002087257

 

PARTIES

Complainant is J.G., Inc. ("Complainant"), represented by John J. Arnott of Munck Wilson Mandala, LLP, Texas, USA. Respondent is Jon Goodhart / Just Like New Overspray Removal ("Respondent"), represented by Joel Fyke of Forman Watkins & Krutz LLP, Mississippi, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nationwideoversprayremoval.com>, registered with Squarespace Domains II LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

        Georges Nahitchevansky as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 6, 2024; Forum received payment on March 6, 2024.

 

On March 7, 2024, Squarespace Domains II LLC confirmed by e-mail to Forum that the <nationwideoversprayremoval.com> domain name is registered with Squarespace Domains II LLC and that Respondent is the current registrant of the name. Squarespace Domains II LLC has verified that Respondent is bound by the Squarespace Domains II 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 8, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 2024 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@nationwideoversprayremoval.com. Also on March 8, 2024, 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 April 19, 2024.

 

On April 22, 2024, pursuant to the Parties' requests to have the dispute decided by a single-member Panel, Forum appointed Georges Nahitchevansky 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that it is a family owned company providing overspray removal services for vehicles including paint overspray removal. Complainant has provided such services since 1982 and since as early as 1988 has used the name and mark NATIONWIDE OVERSPRAY in connection with its overspray removal services.

 

Complainant owns a United States trademark registration for NATIONWIDE OVERSPRAY (Registration No. 1,954,036) that issued to registration on February 6, 1996.  Complainant also owns and has used since at least as early as May 1999 the domain name <www.nationwideoverspray.com> for a website regarding Complainant and its overspray removal services.

 

Complainant maintains that when Respondent registered the disputed domain name on July 7, 2018, Complainant had consistently used the name and mark NATIONWIDE OVERSPRAY since 1988 in connection with overspray removal services.

 

Complainant argues that the disputed domain name is confusingly similar to Complainant's NATIONWIDE OVERSPRAY mark as it incorporates the mark in its entirety, merely adding the word "removal,' which describes the services covered by Complainant's mark, and the generic top-level domain ("gTLD) ".com". Complainant cites prior UDRP cases to support its contentions.

 

Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name as Respondent (i) is not commonly known by the NATIONWIDE OVERSPRAY mark and uses its own mark JUST LIKE NEW OVERSPRAY REMOVAL to offer competing services, and (ii) is using the disputed domain name to redirect users to Respondent's primary website at <www.jlnoverspray.com> through which Respondent offers competing overspray removal services. In that regard, Complainant further contends that Respondent is not making nominative or fair use of the disputed domain name but is using the disputed domain name which is based on Complainant's NATIONWIDE OVERSPRAY mark in order to confuse and mislead the public as to the source of Respondent's website in order to offer Respondent's competing overspray removal services.  Complainant cites prior UDRP cases to support its contentions.

 

Lastly, Complainant asserts that Respondent has registered and used the disputed domain name in bad faith because Respondent had actual or constructive knowledge of Complainant's NATIONWIDE OVERSPRAY mark before registering the disputed domain name in 2018. Complainant notes that the parties through their attorneys previously communicated since at least as early as 2015 regarding Respondent's unauthorized use of Complainant's NATIONWIDE OVERSPRAY mark in advertisements and on Respondent's website and social media pages. Complainant also notes that in 2017 it filed a takedown notice with LinkedIn based on the use of the NATIONWIDE OVERSPRAY mark on a LinkedIn page for Respondent's CEO. Complainant further notes that it recently sent, through its current counsel, a cease and desist letter to Respondent regarding its continued use of the disputed domain name as a redirect to Respondent's website.

 

Complainant argues that Respondent has not only registered the disputed domain name in bad faith, but is acting in bad faith by using the disputed domain name to intentionally attract for commercial gain Internet users to Respondent's website to offer competing services. Complainant cites prior UDRP case to support its contentions.

 

B. Respondent

Respondent rejects Complainant's contentions.

 

Respondent states that its company Just Like New Overspray Removal ("JLN Overspray Removal") is a small family owned business that offers nationwide overspray removal services. Respondent maintains that it has offered its overspray removal services since 1994.

 

Respondent contends that "nationwide overspray removal" is a descriptive phrase that is the most concise way to describe the services offered by Respondent and a phrase used by numerous other overspray removal service providers. Respondent notes that in 2015 it was contacted by Complainant's prior counsel regarding the use of the phrase "nationwide overspray removal."  At that time, Respondent rejected Complainant's contentions and argued that the descriptive use of the phrase was permissible under applicable case law. Respondent further contends that nine years after rejecting Complainant's contentions and six years after registering the disputed domain name, Complainant has initiated this proceeding.

 

Respondent asserts that while Complainant owns a United States registration for NATIONWIDE OVERSPRAY, Complainant's rights in such are narrow, particularly as Complainant disclaimed the word "overspray" to secure its registration.  Respondent contends that because Complainant's rights are narrow and the disputed domain name is a descriptive domain, Complainant cannot show that the disputed domain name is identical or confusingly similar to Complainant's NATIONWIDE OVERSPRAY mark. Respondent cites UDRP case in support of its positions.

 

Respondent argues that it has rights and legitimate interests in the disputed domain name as it is simply using a disputed domain name based on a descriptive phrase. Respondent rejects Complainant's arguments to the contrary and contends that descriptive domains are common and do not violate the Policy. Respondent also argues that it is making a fair use of the disputed domain name as it describes Respondent's services of providing nationwide overspray removal. Respondent contends that there are numerous overspray removal companies that describe their services as nationwide and/or which use the phrase "nationwide overspray removal."  Respondent provides links to several third party websites in support of its contentions.

 

Lastly, Respondent argues that it has not acted in bad faith as it has the right to use a common phrase to describe its services. Respondent notes that in 2015 it made that clear to Complainant and that it believed trademark law protects the usage of "nationwide" and "overspray" from monopolization by Complainant when those words are used for their descriptive meaning. Respondent cites to UDRP cases and US court cases in support of its contentions.

 

FINDINGS

Complainant holds trademark rights for the NATIONWIDE OVERSPRAY mark. The disputed domain name is confusingly similar to Complainant's NATIONWIDE OVERSPRAY. Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name and that Respondent registered and has used the domain name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

The disputed domain name incorporates Complainant's NATIONWIDE OVERSPRAY mark in its entirety, and merely adds the common word "removal" at the tail of the disputed domain name along with the ".com" gTLD. Under Paragraph 4(a)(i), adding a gTLD and a common or descriptive word is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word "advisors" and the gTLD ".com" did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)).

 

Given that the first element is essentially a standing requirement, because Complainant's claimed mark is fully incorporated and clearly recognizable at the head of the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant's mark for purposes of Paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Paragraph 4(a)(ii) of the Policy, and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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"); see also Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006)

 

Here, there is no dispute that Respondent is not commonly known by the disputed domain, given that its competing overspray removal business uses the name JNL Overspray Removal. Additionally, there is no dispute that Respondent is currently using the disputed domain name as a redirect to Respondent's website at <www.jlnoverspay.com> to offer competing overspray removal services.

 

Respondent, however, contends that its actions are legitimate as Complainant's rights in the NATIONWIDE OVERSPRAY mark are narrow and the disputed domain name merely consists of a descriptive phrase used by Respondent and several third parties to accurately describe the offering of nationwide overspray removal services.

 

On its face, Respondent's arguments do have some merit. There are third parties, as Respondent shows, that use the words "nationwide" or "overspray," and/or the phrase "nationwide overspray removal" to describe their overspray removal services. Whether such uses amount to a fair use or constitute trademark infringement is beyond the scope of this proceeding. However, in reviewing the links provided by Respondent, none of the claimed third party uses are as a trademark or trade name and none of the third parties use a domain name that incorporates Complainant's NATIONWIDE OVERSPRAY mark. The third party uses are all in the context of websites promoting overspray removal services and describing such services as being offered nationwide. Put another way, the third party uses are contextually based and are merely part of the overall text on the third party websites or pages that is used to describe the services being offered by the particular party in question.

 

By contrast the disputed domain name stands by itself when first encountered. There is no per se immediate textual context and thus a consumer who sees the disputed domain name may initially believe it is connected to Complainant because the disputed domain name starts with and fully incorporates Complainant's NATIONWIDE OVERSPRAY name and mark. As such, the disputed domain name carries a high risk of implied affiliation. The use of the additional term "removal," which relates to the very services offered by Complainant, does not lessen that implied affiliation and in fact heightens the likelihood that a consumer might see the disputed domain name as connected to Complainant.  See, e.g., Fitness International, LLC v. Dan Lee, FA 1995850 (Forum June 7, 2022) ("In this case, the disputed domain name incorporates Complainant's L.A. FITNESS trademark in its entirety and adds the term "boxing", which can be easily related to Complainant's fitness services. Therefore, the Panel finds that the disputed domain name carries a risk of implied affiliation with Complainant."); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 2.5.1.

 

To be sure, the parties' communications in 2015 make this distinction even more evident. At that time, Respondent appears to have used the phrase "nationwide overspray removal" in text within advertisements, its website and social media pages to describe its services. Respondent argued that such contextual uses were a fair use to accurately describe the services of JLN Overspray Removal. But to be clear those communications did not involve the registration and use of a domain name based on the NATIONWIDE OVERSPRAY mark. For Respondent to now try to morph a contextual descriptive use, that was possibly a fair use, into a broad right to register a domain name that carries a high risk of implied affiliation is perhaps going too far. Respondent was, and is, clearly aware of Complainant, its competitor, and of Complainant's rights in the NATIONWIDE OVERSPRAY name and mark. Nevertheless, Respondent chose to register and use a domain name that would emphasize NATIONWIDE OVERSPRAY. Perhaps this was done in the mistaken belief that Complainant had no rights in NATIONWIDE OVERSPRAY, notwithstanding Complainant's ownership of a federal trademark registration, but in the context of competitors offering the same services, Respondent should have known better and stayed away from using a domain name that emphasized the NATIONWIDE OVERSPRAY mark and which more likely than not would attract and redirect consumers to Respondent's competing website.     

 

Based on the available record, the Panel finds the second element of the Policy has been established in Complainant's favor.

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the time of registration of the disputed domain name in 2018, Respondent had actual knowledge of Complainant's NATIONWIDE OVERSPRAY mark given Respondent's prior communications with Complainant in 2015, and perhaps earlier, regarding Respondent's use of the NATIONAL OVERSPRAY mark.

 

While Respondent might enjoy a limited right to make a textual descriptive use of "nationwide overspray removal" on its website or advertising materials to fairly describe its services, a contention beyond the scope of this UDRP, the Panel finds that Respondent here knowingly registered and used the disputed domain name, that is likely to be seen by the relevant consumers as connected to Complainant, in order to attract and redirect consumers to Respondent's website which offers competing services. To be sure, the use of a disputed domain name based on the mark of a competitor to offer products or services similar to those of the competitor demonstrates an intent to attract internet users for commercial gain under Paragraph 4(b)(iv) of the Policy. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv)."); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA 1579141 (Forum Oct. 15, 2014) ("Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.").

 

To be sure, even if Complainant's registered and incontestable trademark for NATIONWIDE OVERSPRAY is arguably weak, as Respondent claims, such does not provide a competitor a right to use the exact mark in a domain name for purposes of offering competing services. Respondent knew better and should have stayed away from Complainant's NATIONWIDE OVERSPRAY mark when registering the disputed domain name to promote its services. As such, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Paragraph 4(b)(iv) of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <nationwideoversprayremoval.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Georges Nahitchevansky, Panelist

Dated: May 5, 2024