DECISION

 

Steri-Clean, Inc. v. Tahseen Abdullah

Claim Number: FA2503002146193

 

PARTIES

Complainant is Steri-Clean, Inc. ("Complainant"), represented by Eric Perrott of Gerben Perrott PLLC, District of Columbia, US. Respondent is Tahseen Abdullah ("Respondent"), Pakistan.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <cigarettesmokeremovalservices.com>, registered with HOSTINGER operations, UAB.

 

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.

 

Jonathan Agmon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 21, 2025; Forum received payment on March 21, 2025.

 

On March 25, 2025, HOSTINGER operations, UAB confirmed by e-mail to Forum that the <cigarettesmokeremovalservices.com> domain name is registered with HOSTINGER operations, UAB and that Respondent is the current registrant of the name. HOSTINGER operations, UAB has verified that Respondent is bound by the HOSTINGER operations, UAB 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 25, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2025 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@cigarettesmokeremovalservices.com. Also on March 25, 2025, 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 March 25, 2025.

 

On March 27, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Jonathan Agmon 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, Steri-Clean, Inc. is an Idaho corporation in the odor removal, cleanup, and cleaning services industry.

Complainant is the registered proprietor of trademark registration no. 5616150 for CIGARETTE SMOKE REMOVAL and Design, registered on November 27, 2018, in the United States. Complainant also claims common law trademark rights to CIGARETTE SMOKE REMOVAL.

 

Complainant owns and operates its domain name <cigarettesmokeremoval.com>, registered on June 30, 2016.

 

The disputed domain name <cigarettesmokeremovalservices.com> was registered on September 28, 2024, and resolves to a website that clones Complainant's website, displays Complainant's trademark, and offers goods and/or services which compete with Complainant's own offerings.

 

The disputed domain name is confusingly similar to Complainant's CIGARETTE SMOKE REMOVAL trademark. the disputed domain name contains Complainant's CIGARETTE SMOKE REMOVAL trademark in its entirety with the addition of the generic and descriptive word "services", and the generic top-level domain ("gTLD") ".com".

 

The additional word in the disputed domain name does not minimize or avoid any risk of confusing similarity because the addition of the generic term "services" is insufficient to distinguish an infringing domain name from a federally protected mark.

 

Respondent has no legitimate interest in the infringing domain name, as Complainant believes he is using the disputed domain name to scam Complainant's customers. Respondent's use of the disputed domain name to pass off as Complainant does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use. Respondent is also scamming Complainant's customers by using the disputed domain name and sending them false invoices. Respondent is not commonly known by the disputed domain name, and the WHOIS information of the disputed domain name does not provide any evidence of such a fact. Respondent is also not a licensee of Complainant. Respondent is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Complainant believes that Respondent's website exists to confuse consumers and benefit from the significant goodwill that Complainant has achieved. Complainant also believes that Respondent is deceitfully attracting Internet traffic away from Complainant's own website to a webpage that mimics Complainant's website, such that Complainant's customers will incorrectly believe that the disputed domain name is associated or affiliated with, sponsored, or endorsed by Complainant. Respondent is therefore attempting to unjustly profit from the substantial goodwill associated with the CIGARETTE SMOKE REMOVAL mark and scam Complainant's customers. Such actions are clear evidence of not having rights or legitimate interest in the disputed domain name, and of bad faith registration and use.

 

Complainant believes that Respondent registered the disputed domain name primarily for the purpose of disrupting the business of Complainant, and is an intentional attempt by Respondent to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website. Complainant believes that Respondent has clearly intended to capitalize on the goodwill associated with the CIGARETTE SMOKE REMOVAL mark. Complainant further believes that the disputed domain name serves as noting more than a means for infringement because the disputed domain name exists to track Complainant's customers into paying false invocies. This is evidence of bad faith.

 

B. Respondent

Respondent's website was never intended to infringe on Complainant's rights, mislead the public, or derive commercial benefit from Complainant's brand. Respondent's website was used internally and temporarily as a drafting tool during the development of a new web presence for Respondent's own service-based business.

 

The disputed domain name was never publicly launched: Respondent's website was in an early staging phase and was not indexed, advertised, or made accessible to the broader public, and there was no intent to impersonate or confuse. While references to Complainant's branding appeared on Respondent's website during the internal draft phase, it was strictly for layout or inspiration purposes, and Respondent had no intention to pass off as Complainant or associate his business with Complainant. Respondent does not claim ownership over Complainant's trademarks, logos, or intellectual property. Any resemblance was unintentional and has not resulted in any commercial advantage or public misrepresentation.

 

Respondent stated that his website will be taken down in its entirety, and all associated content would be permanently removed. Respondent will also voluntarily relinquish any references to Complainant's branding or services in his materials or digital assets. Further, if the Panel deems it appropriate to transfer the domain, Respondent will not oppose such an action.

 

FINDINGS

-       Complainant owns rights in the CIGARETTE SMOKE REMOVAL trademark.

 

-       The <cigarettesmokeremovalservices.com> domain name is confusingly similar to the CIGARETTE SMOKE REMOVAL trademark in which Complainant has rights.

 

-       Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, which has not been rebutted.

 

-       Complainant has established that both registration and use of the disputed domain name by Respondent is 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 Policy ¶ 4(a)(i) requires Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

 

Registration of a mark with a trademark office suffices to establish the rights under the Policy. 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 a mark for the purposes of Policy ¶ 4(a)(i). Complainant provided evidence that it owns the CIGARETTE SMOKE REMOVAL trademark in the form of a TSDR trademark registration printout from the USPTO.

 

The disputed domain name <cigarettesmokeremovalservices.com> contains Complainant's CIGARETTE SMOKE REMOVAL trademark albeit with the addition of the term "services". The Panel is of the view that the addition does not prevent a finding of confusing similarity with the CIGARETTE SMOKE REMOVAL trademark since the CIGARETTE SMOKE REMOVAL trademark is recognizable within the disputed domain name. See principles set out in WIPO Jurisprudential Overview 3.0 at ¶1.7 and 1.8; see also Stardust Materials v. Neil Ivey, FA 940188 (Forum Jun. 1, 2021).

 

The Panel notes that Respondent has not claimed ownership of Complainant's trademarks, logos, or intellectual property.

 

Accordingly, the Panel finds that the domain name <cigarettesmokeremovalservices.com> is confusingly similar under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

The Policy ¶ 4(a)(ii) requires Complainant to show that Respondent has no rights or interests in respect of the disputed domain name. Once Complainant establish a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to Respondent to show that it has rights or legitimate interests in respect of the disputed domain name. See WIPO Jurisprudential Overview 3.0 at ¶2.1 and Google LLC v. Alex Xavier/ Alexander Xavier / Sustineri Foresight Ltd, FA 28296 (Forum Mar. 15, 2023).

 

The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain name. Complainant provided evidence that it owned the trademark registration of the CIGARETTE SMOKE REMOVAL mark long before the date the disputed domain name was registered. Complainant is not affiliated with, nor has it licensed or otherwise permitted Respondent to use Complainant's trademark. See IndyMac Bank F.S.B. v. Grant Eshback d/b/a eMit Mortgage, Inc., FA 830934 (Forum Dec. 7, 2006) (finding that Respondent failed to establish rights and legitimate interests in the <cigarettesmokeremovalservices.com> domain name as Respondent was not authorized to register domain names featuring Complainant's mark and failed to submit evidence of that it is commonly known by the disputed domain name).

 

Next, it is up to Respondent to rebut the prima face case made by Complainant. Respondent has not provided evidence showing that it has any rights or legitimate interests in the CIGARETTE SMOKE REMOVAL trademark. Respondent did not rebut the prima facie presumption made by the Complainant.

 

There is no evidence that Respondent is commonly known by the disputed domain name. See WIPO Jurisprudential Overview 3.0, ¶2.3 and Foot Locker Retail, Inc. v. Gibson, FA 139693 (Forum Feb. 4, 2003) ("Due to the fame of Complainant's FOOT LOCKER family of marks . . . and the fact that Respondent's WHOIS information reveals its name to be 'Bruce Gibson,' the Panel infers that Respondent was not 'commonly known by' any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.").

 

Respondent has admitted that the disputed domain name was used internally and temporarily as a drafting tool during the development of a new web presence for our own service-based business. Respondent's also admitted his website used the Complainant's website, albeit for layout or inspiration purposes. Respondent stated that the website was in an early staging phase and was not made accessible to the broader public, though the Complainant was able to provide a copy of said website to the Panel.

 

In considering Policy ¶ 4(c)(iii) the Panel agrees with Complainant's assertion that Respondent is not making a legitimate noncommercial or fair use of the domain name. The Panel notes that Respondent has submitted no evidence to rebut Complainant's arguments. While Respondent has not admitted wrongdoing, it is the finding of the Panel that Respondent is not using the disputed domain name for any legitimate purpose. 

 

The Panel finds that Respondent has failed to rebut Complainant's prima facie case and therefore that Respondent has no rights or legitimate interests in respect of the disputed domain name under the Policy. The Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

The Panel finds that Complainant has established that the disputed domain name was registered and is being used in bad faith.

 

As noted, Respondent did not dispute that Complainant had rights in the CIGARETTE SMOKE REMOVAL trademark long before he registered the disputed domain name and has not claimed to have rights in the CIGARETTE SMOKE REMOVAL trademark.

 

Given that Complainant's trademark has been registered for many years, it is highly unlikely that Respondent was unaware of Complainant and its trademark prior to registering the disputed domain name. While Respondent claims that he used Complainant's trademark as part of developing its own website, this cannot be reconciled with why Respondent chose to incorporate the term "CIGARETTE SMOKE REMOVAL" into the disputed domain name and use Complainant's website copy at the same time. Respondent has made bare statements that there was no intent to impersonate or confuse Internet users, but has not provided any further explanation in respect of the choice of domain name, or why fake invoices were issued to Complainant's customers (See Exhibit E). The use of the disputed domain name to pass Respondent as the Complainant is clearly evidence of bad faith registration and use. See Fossil, Inc. v. www.fossil-watch.org c/o Host Master, FA 335513 (Forum Nov. 9, 2004); AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).

 

Given the evidence presented to the Panel, including the use of the disputed domain name, the irresistible conclusion is that Respondent was well aware of Complainant's trademark at the time of registration of the disputed domain name and sought to capitalize on Complainant's goodwill and/or reputation, and impersonate Complainant to obtain pecuniary gain from Complainant's customers.

 

The Panel considered all the other arguments made by Respondent and found them not to be persuasive given that Respondent has acknowledged Complainant's rights in the CIGARETTE SMOKE REMOVAL trademark, was targeting Complainant's trademark rights by its use of the disputed domain name and failed to show bona fide use or preparation for use of the disputed domain name.

 

The Panel finds that Complainant has establish Policy ¶ 4(a)(iii).

 

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 <cigarettesmokeremovalservices.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Jonathan Agmon, Panelist

Dated: April 10, 2025