DECISION
Stanley Steemer International, Inc. v. Ofir Asis / Desert / Omri Talor / Precision carpet care inc
Claim Number: FA2504002152576
PARTIES
Complainant is Stanley Steemer International, Inc. ("Complainant"), represented by Sabina A. Vayner of Greenberg Traurig, LLP, Georgia, United States of America (USA). Respondent is Ofir Asis / Desert / Omri Talor / Precision carpet care inc ("Respondent"), represented by Ryan Gile of Gile Law Group Ltd., Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <stainlesssteamerca.com>, <stainlesssteamerlv.com>, <stainlesssteamercalifornia.com> and <stainlesssteamernv.com>, (the "Domain Names") registered with GoDaddy.com, 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.
Clive Elliott K.C. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on April 25, 2025; Forum received payment on April 25, 2025.
On April 28, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the Domain Names are all 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 May 1, 2025, Complainant submitted an amended complaint to Forum electronically; Forum received payment on May 1, 2025.
On May 2, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 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@stainlesssteamerca.com, postmaster@stainlesssteamerlv.com, postmaster@stainlesssteamercalifornia.com, and postmaster@stainlesssteamernv.com. Also on May 2, 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 May 21, 2025.
On May 23, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Clive Elliott K.C., as Panelist.
On May 23, 2025, Complainant submitted a Notice of Civil Action together with annexures to Forum electronically, advising it had commenced civil proceedings against Respondent in the U.S. District Court for the Central District of California. This issue is discussed further below.
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 Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
A preliminary issue that needs to be determined is whether Complainant is entitled to make a single complaint against four domain names involving multiple respondents.
According to the publicly available WHOIS the Domain Names were registered as follows:
(a) <stainlesssteamerca.com> - July 24, 2017;
(b) <stainlesssteamerlv.com> - July 24, 2017;
(c) <stainlesssteamercalifornia.com> - February 23, 2023; and
(d) <stainlesssteamernv.com> - February 23, 2023.
Complainant contends that all four of the Domain Names are owned and controlled by a single entity or individual, as evidenced by:
a) Omri Talor of Precision Carpet Care Inc being shown as the registrant for <stainlesssteamerca.com>, and Ofir Asis, who is CEO of Precision Carpet Care Inc as the registrant for the other three Domain Names.
b) All four Domain Names were registered using the same privacy service to shield the owner's identity and the same registrar, GoDaddy.com.
c) All four Domain Names follow a similar naming convention, each consisting of an allegedly confusingly similar version of Complainant's Mark combined with a geographically descriptive term.
d) Finally, all four Domain Names resolve to virtually identical, active websites.
Complainant asserts that these facts demonstrate the Domain Names are owned and controlled by the same individual or entity.
Respondent confirms that Mr. Asis and Mr. Talor are associated and Desert Carpet Cleaners and Precision Carpet Care offer carpet cleaning services using the name Stainless Steamer and jointly operate the websites connected to the Domain Names. Accordingly, Respondent confirms that Mr. Asis and Mr. Talor may be treated as joint respondents for purposes of this action.
Given the above, the Panel is satisfied that the Complaint in relation to the four Domain Names should be determined together.
PARTIES' CONTENTIONS
A. Complainant
Complainant asserts that it has, for the past half century, provided carpet and upholstery cleaning and installation services and products throughout the United States. Complainant further asserts that it is the registered owner of the mark STANLEY STEEMER (Complainant's Mark), including:
Mark | Jurisdiction | Registration No | Registration Date | Classes |
STANLEY STEEMER | USA | 099,6362 | October 22, 1974 | 7 |
STANLEY STEEMER | USA | 1,006,675 | March 11, 1975 | 37, 42 |
STANLEY STEEMER | USA | 1,406,382 | August 26, 1986 | 3 |
STANLEY STEEMER | USA | 1,694,865 | June 16, 1992 | 37 |
STANLEY STEEMER | USA | 2,274,323 | August 31, 1999 | 37 |
STANLEY STEEMER | USA | 2,442,125 | April 10, 2001 | 35, 37 |
STANLEY STEEMER | USA | 2,871,734 | August 10, 2004 | 37 |
1-800-STEEMER | USA | 3,464,933 | July 15, 2008 | 37 |
Complainant states that it operates its business through the domain name <stanleysteemer.com> and accompanying website (Complainant's website), which is an integral part of Complainant's business operations and brand identity.
Complainant further states that it has established a strong trade mark right and significant goodwill in Complainant's Mark by virtue of its exclusive, longstanding use and extensive marketing, advertising and promotional efforts.
Complainant asserts that Respondent registered two of the Domain Names on July 24, 2017, which are set to expire on July 24, 2025, and the other two Domain Names on February 23, 2023, with expiry on February 23, 2026.
Complainant contends that each of the four Domain Names consists of the phrase "Stainless Steamer" combined with a geographic indicator. This phrase, Complainant submits, is confusingly similar to Complainant's Mark. In addition, Complainant contends that Respondent has selected the phrase intentionally and in bad faith to create confusion with Complainant's Mark. Complainant argues that the phrase "Stainless Steamer" in the Domain Names incorporates a first term "stainless" which is visually and phonetically similar to the first term "Stanley" in Complainant's Mark and the second term "steamer" is virtually identical as displayed and phonetically identical to the second term "steemer" in Complainant's Mark.
Complainant claims that as of April 25, 2025, each of the Domain Names resolved to virtually identical websites, with each purportedly offering carpet and upholstery cleaning and related services.
Further, Complainant notes that the resolving websites of the Domain Names <stainlesssteamercalifornia.com>, <stainlesssteamerlv.com> and <stainlesssteamernv.com> still include under the "Contact Us" heading the email addresses stainlesssteemerca.bing@gmail.com, stainlesssteemerlv.bing@gmail.com, and stainlesssteemerlv@gmail.com. Each of which incorporates the uniquely spelled "steemer" portion of Complainant's Mark. Complainant submits that Respondent is intentionally and in bad faith attempting to pass off its services as those of Complainant.
Complainant goes on to claim that Respondent had recently begun running sponsored ads on Google, blatantly using Complainant's Mark without authorization and including a ® symbol after Complainant's Mark, resulting in Respondent's Domain Names being displayed at the top of Google search results for "Stanley Steemer".
B. Respondent
In response, Respondent accepts that Desert Carpet Cleaners, Inc, and Precision Carpet Care, Inc, offer carpet cleaning services, using the name Stainless Steamer and jointly operate the websites connected to the Domain Names.
Respondent points out that this is not the first dispute with Complainant. In 2017, Complainant sent a cease-and-desist letter to Respondents objecting to Respondents' use of the domain names <stainlesssteemercarpetcleaningca.com> and <stainlesssteemercarpetcleaninglasvegas.com>. Respondent asserts that it ceased use of these domain names and registered the Domain Names <stainlesssteamerca.com> and <stainlesssteamerlv.com> at issue in this case.
Respondent claims that Complainant has been aware of Respondents and their use of the <stainlesssteamerca.com> and <stainlesssteamerlv.com> Domain Names for almost 8 years, but has delayed in bringing an action, and argues that this supports the equitable defense of laches and is evidence of a lack of confusing similarity.
Respondent denies that the Domain Names are confusingly similar and contends that the differences between the Domain Names and Complainant's Mark are that the Domain Names contain two new words, "stainless" and "steamer," that are not present in Complainant's Mark.
Respondent denies that the first portion of the Domain Names is a misspelling of the first word in Complainant's Mark "Stanley". Respondent submits that the first portion of the Domain Names is "stainless" meaning "without stain or blemish" or "resistant to stain or corrosion", and states that it is an entirely new, recognizable word with a different meaning.
Similarly, with the second portion of the Domain Names, being distinct from the second word of Complainant's Mark, Respondent argues that the second word of the Domain Names is the common English word "steamer" which can mean "one that steams" or "a container in which something is steamed", whereas by contrast the second word of Complainant's Mark "steemer" is not a common English word.
Respondent argues that it can demonstrate rights in the Domain Names, as it has been using the Domain Names in connection with legitimate carpet cleaning businesses for over eight years. Furthermore, Respondent points out, that its web pages contain a disclaimer that clearly states: "Our services are not associated with or endorsed by stanley steemer. We are an independent company that offers similar services". Respondent believes that this use of a disclaimer is evidence that it has not sought to impersonate or pass itself off as Complainant, but instead is offering a legitimate, competing service.
C. Complainant's Further Submissions and Notice of Civil Action
Complainant advises that on May 23, 2025 it commenced civil proceedings against Respondent in the U.S. District Court for the Central District of California for the transfer and assignment of each of the Domain Names to Complainant or its designated representative, seeking injunctive and monetary relief including but not limited to damages, profits, statutory damages, punitive damages, and an award of attorneys' fees.
FINDINGS
For the reasons that follow, the Panel is not satisfied that this is an appropriate case for the transfer of the Domain Names. The Complainant has not satisfied the Panel that, on balance, the Domain Names should be transferred to Complainant, particularly while extant District Court proceedings will determine that precise issue.
The reasons for making that finding are set out as follows.
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 first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant's Mark and the Domain Names. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.
Complainant claims rights in Complainant's Mark through the USPTO trade mark registration, as set out above. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). Since Complainant provides evidence of registration of Complainant's Mark with the USPTO, the Panel finds that Complainant has demonstrated rights in Complainant's Mark per Policy ¶ 4(a)(i). The Panel also notes that one of the earliest trade mark registrations, dating back to 1974, was registered well before Respondent started using and registered the earliest of the Domain Names, ie in 2017.
Complainant argues that the Domain Names are confusingly similar to Complainant's Mark on the basis that the phrase "Stainless Steamer" in the Domain Names incorporates a first term "stainless" which is visually and phonetically similar to the first term "Stanley" in Complainant's Mark and the second term "steamer" is virtually identical to the second term "steemer".
The relevant comparison is therefore between STANLEY STEEMER and STAINLESS STEAMER. In terms of an allegation of confusing similarity, what is required is "a side-by-side comparison of the letters, words, sound, and other sensate aspects of the disputed domain name to the corresponding aspects of the relevant trademark." Zimmermann Wear Pty Ltd v. Sam Dumond, FA 1802176 (Forum Sept. 17, 2018). The manner in which the domain name is used, including the content of the associated website, should be disregarded for purposes of this analysis. See, e.g., MasterCard Int'l Inc., MasterCard Europe SPRL v. IT Manager/ Crosspath, D2009-1714 (WIPO Feb. 15, 2010).
Changes to a mark, including the substitution of a letter, may create a new word and convey a different meaning from a mark so as to adequately distinguish a domain name from a trade mark per Policy ¶ 4(a)(i). See Google, Inc. v. Wolfe, FA 275419 (Forum July 18, 2004) ("The <froogles.com> domain name is not confusingly similar to Complainant's GOOGLE mark. The dissimilar letters in the domain name are sufficiently different to make it distinguishable from Complainant's mark because the domain name creates an entirely new word and conveys an entirely singular meaning from the mark.").
In the present case, the first word in most of Complainant's Marks is "Stanley," which is either a first name or a surname, which, as Respondent points out, has no ordinary meaning in English. In contrast, the first word in the Domain Names is the English word "stainless," which means "without stain or blemish" or "resistant to stain or corrosion." One only has to think of "stainless steel" to understand what the term might mean. Accordingly, the Panel is satisfied that the first words have different meanings.
The second words are certainly a lot closer and differ in terms of spelling. The word "Steemer" may be taken by some consumers to be a surname (albeit an uncommon one) or a misspelling of the English word "steamer". Respondent spells the word correctly, which points to its normal meaning, someone or something that "steams".
On the basis of the above, the Panel is of the view that the words "stanley" and "stainless" are sufficiently different while the words "steemer" and "steamer" are similar but not identical. Comparing the look, sound and meaning of Complainant's Mark and the Domain Name, overall, they are reasonably similar. However, the relevant question is whether they are confusingly similar. Taking all considerations into account, and applying the above standard, the Panel is not entirely convinced that they are confusingly similar. However, for the reasons that become apparent below, the Panel finds that the Complainant's Mark and the Domain Names are confusingly similar, but only by a narrow margin.
Before moving on to the other grounds, the Panel notes that if it finds that the first requirement of the Policy has been satisfied under Policy ¶ 4(a)(i), but by a narrow margin, as is the case here, that finding may well influence its assessment of the second and third requirements of the Policy.
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests.
In the present case, if it is accepted that Complainant is able to make out a prima facie case, Respondent counters with an argument that the Domain Names consist of two descriptive or generic terms – "stainless" and "steamer" – followed by geographic designators. Respondent also puts forward the proposition that the term "stainless" can mean "without stain or blemish" and "steamer" can be defined as "one who steams" and that "steam cleaning" is a well-known process which uses a "steam cleaner" (or "steamer") to clean and disinfect a variety of surfaces.
Complainant counters this argument by saying that it has used Complainant's Marks for the past 50 years, providing carpet and upholstery cleaning and installation services and products throughout the United States, and that Complainant's Marks therefore have acquired a secondary signification. The Panel accepts that this argument has merit and has taken it into account.
The Panel also takes into account the argument that the words making up the Domain Names are apt for use in relation to cleaning services and it seems to be common ground that Respondent has been in the cleaning services business for at least eight years and, leaving aside the allegations about its registration and use of the Domain Names, that Respondent otherwise runs what appears to be a legitimate cleaning business.
The use of descriptive terms that are apt to describe the respondent's goods or services in a domain name may provide a basis to draw an inference that the respondent has some rights or interests in the domain names in issue, pursuant to Policy ¶ 4(a)(ii). See Roto-Rooter Corporation v Michael Whitman, FA 1616496 (Forum June 25, 2015) (finding that the respondent was using the <rooterrooter.com> domain name for a bona fide offering of goods or services because the term was "common and generic/descriptive, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet"); Kaleidoscope Imaging, Inc. v. V Entm't, FA 203207 (Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was "generic" and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes).
In addition, Respondents have been using certain of the Domain Names for almost eight years, and understandably, Respondent argues that Complainant has delayed unduly in bringing legal proceedings and these domain name proceedings. Respondents in a similar situation were able to invoke the equitable defense of laches, and, at the very least, it is evidence of a lack of confusing similarity. See Georgia Department of Transportation v. Nate Portney, FA 2144054 (Forum Apr. 5, 2025) (noting that the UDRP has not specifically cited the concept of laches but that "delay in filing a UDRP complaint may make it difficult for a complainant to establish its case on the merits.") (citing WIPO Overview, Third Edition, #4.17). The Panel is satisfied that the same principles apply here and that, on balance, Respondent has demonstrated that it has sufficient rights or legitimate interests in the Domain Names, for the status quo to be maintained (see further discussion below).
On that basis, Complainant is not able to satisfy the second requirement.
Registration and Use in Bad Faith
Complainant claims that Respondent registered and uses the Domain Names in bad faith for the purpose of diverting online traffic, premised on consumer confusion, and is not a bona fide offering of goods or services. That is, on the basis that the Domain Names resolve to virtually identical websites, with each purportedly offering carpet and upholstery cleaning and related services.
However, both parties are in the business of providing cleaning and related services, and the question of whether the use of the Domain Names is confusingly similar is a question of fact that has to be determined on the basis of a careful evaluation of the evidence as a whole. Complainant provides examples of what it says are instances of confusion and deception. However, the Panel is not adequately equipped and able to properly assess and determine complex and contested questions of fact.
The Panel refers to and relies upon the discussion under whether Respondent has legitimate rights or interests under the Domain Names. Having used at least some of Domain Names for eight years, with Complainant's knowledge and apparent acquiescence, the Panel is not satisfied that bad faith has been established.
Paragraph 18(a) of the UDRP Rules gives the panel discretion to suspend, terminate, or continue a UDRP proceeding where the disputed domain name is also the subject of other pending legal proceedings.
In its Notice of Civil Action dated 23 May 2025 complainant notified Forum that Complainant had commenced a civil action against Respondent before the U.S. District Court for the Central District of California, in Stanley Steemer International, Inc. v. Precision Carpet Care Inc., et al. (Civil Action No.: 2:25-cv-01836-JFW-BFM).
In Complainant's first amended complaint filed on May 14, 2025, it sets out the nature of the action and states at paragraph 1 that the causes of action include domain name infringement under the Federal Lanham Act. Further, in that civil action, Complainant alleges that consumers have been misled by Respondent's conduct and that actual confusion has occurred in the marketplace. That, of course, remains a matter for determination by the District Court, based on the evidence before it.
The prayer for relief in the civil action includes a prayer that Respondent is restrained from using the Infringing Domain Names and that Respondent, and the registrar(s) of each of the Infringing Domain Names, be ordered to transfer and assign to Complainant or its designee each of the Infringing Domain Names.
That is, for all intents and purposes, the same relief sought by Complainant in this proceeding before Forum.
This Panel acknowledges that Panels often issue UDRP decisions on the merits, even in overlapping court-UDRP proceedings, where, notwithstanding the fact that a UDRP decision would not be binding on the court, the relative expediency of the UDRP versus courts is seen as a benefit to the parties.
However, that is not the invariable practice. Other Panels have terminated proceedings and dismissed the complaint, not on the UDRP merits, but on the narrow grounds that the dispute between the parties exceeds the relatively limited "cybersquatting" scope of the UDRP, and would be more appropriately addressed by a court of competent jurisdiction. For example, in Roger Martin v. Sandra Blevins, Social Design, WIPO Case No. D2016-0181, <strategicchoicearchitecture.com>, the panel noted that the case arose out of a personal and professional relationship between the Parties which involved the Respondent working to promote the Complainant's business activities both before and during their marriage and that those issues were not suited for resolution under the Policy, which is designed to address clear cases of abusive cybersquatting (see, for example, the observations of the UDRP panels in The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470, Kurt Garmaker d/b/a "Repitition Miniature Schnauzers" v. Hilde Haakensen, Axcium Design, WIPO Case No. D2015-0993 and IL Makiage Cosmetics (2013) Ltd. v. Mark Rumpler / Mordechai Rumpler / Domains By Proxy, LLC, WIPO Case No. D2015-2311).
In the present case, while the Panel has reached a conclusion on the merits, as best it can, it is not satisfied that this is a clear case of abusive cybersquatting.
The Panel has also taken into account that a form of status quo has arguably existed for eight years. It has also taken into account the fact that the parties are engaged in current court proceedings before a competent court, which is addressing the very issues, the subject of the above proceedings.
The Panel certainly takes no position on the merits of any wider commercial dispute between the Parties. Indeed, Complainant has exercised its rights and is free to seek remedies in other fora.
Finally, the Panel notes that the present finding is confined to the Policy and does not seek to influence any existing or subsequent proceedings that may be raised.
DECISION
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 Domain Names <stainlesssteamerca.com>, <stainlesssteamerlv.com>, <stainlesssteamercalifornia.com> and <stainlesssteamernv.com> REMAIN WITH Respondent at present.
_________________________
Clive Elliott K.C., Panelist
Dated: June 4, 2025
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