DECISION

 

NOLA ELECTRIC AND MAINTENANCE SERVICES LLC v. Arthur Leiter Jr / Leiter Electric Services LLC

Claim Number: FA2505002153709

 

PARTIES

Complainant is NOLA ELECTRIC AND MAINTENANCE SERVICES LLC ("Complainant"), represented by Jared Rovira of Intellectual Property Consulting, LLC, Louisiana, USA. Respondent is Arthur Leiter Jr / Leiter Electric Services LLC ("Respondent"), Louisiana, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nolaelectric.com>, 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.

 

Gerald M. Levine as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on May 2, 2025; Forum received payment on May 2, 2025.

 

On May 5, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the <nolaelectric.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 7, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 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@nolaelectric.com. Also on May 7, 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 27, 2025.

 

On May 27, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Gerald M. Levine 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

The Complainant contends that since as early as August 2014, Complainant Nola Electric and Maintenance Services LLC has provided residential and commercial electrician services under the mark NOLA ELECTRIC. Nola Electric and Maintenance Services LLC owns U.S. Trademark Registration No. 6,358,977 for the mark NOLA ELECTRIC for "Electric contracting" services in International Class 037.

 

The Complainant contends further that it uses its NOLA ELECTRIC Mark in connection with the advertisement and sale of commercial and residential Electric contracting services. Nola Electric is domiciled in the New Orleans metropolitan area. Nola Electric owns and operates a company website accessible through the domain <nolaelectricservices.com>.¹ The website provides a list of Nola Electric's services, its contact information and an online portal for consumers to submit messages to Nola Electric's staff.

 

The Complainant contends still further that Respondent Arthur Leiter Jr. / Leiter Electric Services, LLC (hereafter, "Leiter") is the owner of the domain name <nolaelectric.com> (the "Infringing Domain Name") which is identical to Complainant's NOLA ELECTRIC Mark. Leiter is also located in the New Orleans metropolitan area. Leiter uses the Infringing Domain Name to sell and advertise identical services to those of Nola Electric. Attached as Annex B is a printout of the relevant portions of Leiter's website showing Electric contracting services, which are identical to the services of the NOLA ELECTRIC Mark, being advertised in connection with the domain name <nolaelectric.com>. Leiter is a direct competitor of Nola Electric in the same geographic area. As a result of Leiter's use of the Infringing Domain Name to advertise Electric contracting services, Nola Electric's potential customers may mistakenly believe Leiter is affiliated with, sponsored by or endorsed by Nola Electric.

 

B. Respondent

The Respondent responded to this catalogue of contentions by offering documentary evidence that 1) it registered <nolaelectric.com> on February 20, 2015; and 2) until August 2016 the Complainant was known as NOLA Maintenance Services LLC when it changed its name to NOLA Electric and Maintenance Services, LLC. The trademark for NOLA ELECTRIC postdates his registration of the domain name.

Respondent states further that his use of the name "Nola Electric" was chosen because of its geographic and keyword relevance, not to confuse or divert clients. Respondent has operated independently as Leiter Electric Services LLC and has never marketed itself using their name, branding, or likeness. "Nola Electric" is a generic geographic-industry phrase, not an exclusive or inherently distinctive mark.

Moreover, the Respondent states that "there are multiple similar business names registered in the state of Louisiana. 'Nola Electric' is not a uniquely held or protected phrase, but rather a common geographic-industry identifier. The Respondent points out that it registered the disputed domain name in 2015 and Complainant's trademark was only filed in 2019 and registered in 2021-years after I had been using the domain."

 

The Respondent also points out that the Complainant did not receive its "Commercial License Certificate" from Louisiana State Licensing Board for Contractors until August 26, 2023. It contends that the Complainant could not have been performing electrical services legally in 2015 at the time of the registration of <nolaelectric.com>.

 

FINDINGS

The Panel finds that

1.       Complainant has shown that it is the assignee of record of the prior registered mark for the term NOLA ELECTRIC;

2.       The Complainant has not established that the Respondents lacks rights or legitimate interests in <nolaelectric.com>;

3.       On the contrary, the Respondent has established by competent evidence that it has both a right and a legitimate interest in the disputed domain name;

4.       The Complainant has not established that the Respondent either registered or is using the disputed domain name in bad faith; and

5.       The Complainant initiated this complaint in bad faith in an attempt to deprive the Respondent of its right to hold and use the disputed domain name in connection with its business in New Orleans (NOLA).

 

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 Complainant has affixed a USPTO Certificate of Registration for NOLA ELECTRIC to its complaint in the name of Brendan Piazza (a United States individual), Registration No. 6,358,977 dated May 25, 2021. It acquired its right by assignment from Mr. Piazza on December 3, 2024. Accordingly, Complainant has established that it has a right.

A side by side comparison of the disputed domain name and the mark shows that the second level domain is identical to the mark. As the top level domain is purely a functional element in the Internet Protocol address it can be disregarded. 

The Complainant raises as an issue that it had common law rights predating the registration of the disputed domain name. It offers no proof of this and in any event the Respondent has proffered uncontested documentary evidence that this is a false statement. At the time of the registration of <nolaelectric.com> the Complainant's name was NOLA Maintenance Services LLP and only 2016 did it add "Electric". For these reasons, even though the alleged (although not proved) first use in commerce of its assignor predated the registration of the domain name, the Complainant cannot as assignee claim that earlier date since it had no corporate of licensed capacity at that earlier time. A party whose first use in commerce postdates the registration of a disputed domain name cannot establish a superior common law right.

For these reasons, the Complainant has satisfied Para. 4(a)(i) of the Policy as the current owner of NOLA ELECTRIC.

 

Rights or Legitimate Interests

It is correct, as Complainant points out, that once it establishes a prima facie case, the burden of proof shifts to the Respondent to demonstrate a legitimate right or interest in <nolaelectric.com>. For this proposition it cites Starwood Hotels & Resorts Worldwide, Inc. v. Sanjo CellTech. Ltd.,  No. FA-406512 (Forum Mar. 9, 2005) in which the distinguished Panel noted that the "threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement."

That too is correct but only up to a point. However "low" a complainant's burden may be in succeeding under this head, it is not so low as to succeed where it is asking the panel to infer a lack of rights or legitimate interests on contentions that are contradicted by the documentary evidence, which it has not contested.

But even assuming the bar is as low as the Complainant would have it, the Respondent has adduced credible evidence that it operated a bona fide service under the disputed domain name "before notice" of any claim (Para. 4(c)(i) of the Policy), It has also demonstrated that the disputed domain name predated the registration of the trademark by six years.  

Accordingly, the Complainant has failed to satisfy Para. 4(a)(ii) of the Policy.

 

Registration and Use in Bad Faith

The Policy sets forth in paragraph 4(b) a set of four nonexclusive circumstances any one of which if proved would establish both registration and use in bad faith. Fundamental to these circumstances is that in one manner or another, a complainant will have adduced evidence of targeting, and in acquiring the disputed domain name that the respondent had the complainant or its mark "in mind."

However, the Complainant has adduced no evidence of any kind for any of these circumstances that would support its contention that the Respondent either registered or used <nolaelectric.com> in bad faith when in 2015 it registered the domain name. It could not have done so where the disputed domain name predates the trademark. See Charles E. Runels, Jr. v. Domain Manager / Affordable Webhosting, Inc., Advertising, FA1709001749824 (Forum October 23, 2017) the Panel held that "Respondent's legitimate interest, first and foremost, stems from being the first person to register the Domain Name at a time when it was not subject to any trademark rights whatsoever.").

Neither could there have been bad faith registration and use retrospectively when the Complainant acquired its right by assignment to NOLA ELECTRIC as its corporate name was only changed in 2016 to include the word "Electric." Before that, it was simply known as NOLA Maintenance Services LLC. The Complainant has proffered no evidence to the contrary. Based on this record, the Respondent could not possibly have known of any trademark right since that right did not come into existence until six years later.  

Even assuming that Respondent is a competitor, as the first to register a domain name composed of a descriptive phrase it has an unassailable right to it. See Salem Five Cents Savings Bank v. Direct Federal Credit Union, FA 103058 (Forum February 15, 2002) ("[It] simply makes no sense to this Panel to preclude the Respondent from registering and using a domain name that accurately describes the type of [ ] services it offers.").

For these reasons the Complainant has not satisfied Para. 4(a)(iii) of the Policy.

 

REVERSE DOMAIN NAME HIJACKING

The Panel observes that the Complainant is legally represented. Paragraph 3(b)(xiii) of the Rules provides for the closing certificate required for every complaint under the Policy. The certificate reads:

Complainant certifies that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.

As in Voys B.V., Voys United B.V. v. Thomas Zou, WIPO Case No. D2017-2136 this Panel (as are all panelists) is "entitled to assume that a lawyer signing that certificate has undertaken the necessary research to ensure that the Complaint is properly based. Moreover, the Panel is entitled to assume that the Complaint has been seen by the Complainant and seen to be 'complete and accurate' and approved by the Complainant."

The deficiency of the complaint is of several kinds. Claimant by its professional representatives falsely represented its client's corporate name at the time of the registration of the disputed domain. The documentary evidence establishes without contradiction that the Complainant only became known as NOLA Electric and Maintenance Services LLC a year after the registration of the disputed domain name. It also falsely represented that its right predated the registration of the disputed domain name when it is obvious from the evidence that whatever right it may have acquired by assignment in 2024 postdated the registration of the disputed domain name. It also falsely implied that it operated and operates an electric service business when the evidence demonstrates that it was not issued a Louisiana electrical contractor's license until August 25, 2022. Complainant did not contest the genuineness of any of this documentary evidence. Finally, as indicated in the Endnote it has falsely alleged use of <nolaelectricservices.com> when it never purchased this domain name and operates under an entirely different name in which "nolaelectric" appears as a subdomain.  

Since the disputed domain name predated the accrual of trademark rights and is otherwise based on misrepresentations of facts the Complainant conjures to assert a claim, it must have been evidence to the Complainant and its professional representatives that they could not possibly succeed. This is a case that should never have been brought. See Smart Design LLC v. Hughes, WIPO Claim No. D2000-0993 ("Had the Complainant sat back and reflected upon what it was proposing to argue, it would have seen that its claims could not conceivably succeed").

It is plain that the Complainant commenced this proceeding for the sole purpose of depriving the Respondent of a valuable asset of his business, and by doing so it violated the UDRP by implying that it had a superior right to <nolaelectrical.com> when it had no right at all. 

Even though the Respondent has not requested a finding of reverse domain name hijacking, the Panel finds that the Complainant has attempted to wrest the disputed domain name from the Respondent on the false contention that the Respondent was a cybersquatter when in fact the violator of the UDRP was the Complainant. See Tecme S.A. v. Stephen Bougourd, WIPO Claim No. D2020-2597 ("Although the Respondent did not request a finding of Reverse Domain Name Hijacking, the Panel considers this an appropriate case to enter such a finding.")

 

In view of the above and in accordance with Paragraph 15(e) of the Rules, the Panel finds that Complainant has abused the UDRP process and has attempted to deprive Respondent of the Disputed Domain Name.

 

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 <nolaelectric.com> domain name REMAIN WITH Respondent.

 

 

 

Gerald M. Levine, Panelist

Dated: June 2, 2025