DECISION

 

Gutter Brothers Inc. v. Ryan Parsons / The Brothers that just do Gutters

Claim Number: FA2602002207155

 

PARTIES

Complainant is Gutter Brothers Inc. ("Complainant"), represented by Brian DeHart of Gutter Brothers Inc., Pennsylvania, USA. Respondent is Ryan Parsons / The Brothers that just do Gutters ("Respondent"), represented by Carrie L. Kiedrowski of Jones Day, Ohio.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <brothersgutters.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.

 

Steven M. Levy as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 25, 2026; Forum received payment on February 25, 2026.

 

On February 25, 2026, GoDaddy.com, LLC confirmed by e-mail to Forum that the <brothersgutters.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 March 2, 2026, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2026 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@brothersgutters.com. Also on March 2, 2026, 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 27, 2026.

 

On March 28, 2026 Complainant submitted an additional statement.

 

On March 30, 2026, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy 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 is a Pennsylvania corporation which, since its incorporation on April 4, 2005, has used the name GUTTER BROTHERS to identify its services of the maintenance, repair and replacement of rain gutters and gutter guards. On December 29, 2020, Complainant obtained United States Patent and Trademark Office ("USPTO") Reg. No. 6232094.

 

The <brothersgutters.com> domain name, registered on April 17, 2008, is confusingly similar to the GUTTER BROTHERS mark as it is a direct inversion of the words in the mark.

 

Respondent has no rights or legitimate interests in the disputed domain name where Complainant has never licensed or authorized Respondent to use the GUTTER BROTHERS mark and Respondent's use of the <brothersgutters.com> domain name is a tactical choice to capture traffic belonging to the senior user.

 

Respondent registered and is using the disputed domain name in bad faith where it has admitted that it had knowledge of Complainant's mark from a 2015 buyout offer made by Complainant and based on its use of the domain name to create initial interest confusion and divert internet traffic from and disrupt Complainant's business.

 

B. Respondent

Complainant fails to prove its ownership of rights in the asserted GUTTER BROTHERS mark as these words are merely descriptive of its gutter repair and replacement services that are performed by individuals who are, in fact, brothers. The asserted USPTO registration includes a disclaimer of these words as part of a composite, multi-color logo mark although the Complaint and its accompanying evidence omit mention of this material fact. The words "Gutter Brothers" are similarly disclaimed in Complainant's pending application (Ser. No. 99/123710) and its application for the words GUTTER BROTHERS (Ser. No. 99/398435) has been refused by the USPTO based, in part, on the descriptiveness of these words.

 

Respondent has rights or legitimate interests in the <brothersgutters.com> domain name as it has made a bona fide offering of contractor services related to gutters using the domain name since 2008. It also owns registrations for its trademark THE BROTHERS THAT JUST DO GUTTERS (e.g., Incontestable USPTO Reg. No. 4128676 dated April 17, 2012, and Reg. No. 7668122 dated January 28, 2025) and it has pending applications in the United States and Canada for its trademarks THE BROTHERS THAT JUST DO GUTTERS, BROTHERS GUTTERS, and BROTHERS GUTTER GUARD.

 

The disputed domain name was not registered or used in bad faith based on Respondent's operation of the above-mentioned good faith business. Further, Complainant's delay of eleven years before filing this proceeding undermines any assertion that the disputed domain name is causing it cognizable harm. Rather, Respondent suspects that the timing of the Complaint is due to the 2023 acquisition of Respondent's business by a private equity firm and its current plans to nationally franchise the business.

 

By filing the present Complaint, Complainant has engaged in reverse domain name hijacking.

 

C. Additional Submissions

The Response is a "big law" tactic designed to overwhelm the Board with sheer volume and bury the core facts under a mountain of secondary documentation. In looking beyond this war of attrition, the Respondent's increased use of "Brothers Gutters" in our local market is causing consumer confusion and is actively harming our business and stalling our franchise development at a critical juncture. Complainant, incorporated in 2005, is the senior user as between the two parties.

 

FINDINGS

-       It is unclear, from the presented evidence, whether Complainant owns trademark rights in the asserted GUTTER BROTHERS mark;

-       Respondent is using the <brothersgutters.com> domain name to make a bona fide offering of contractor services related to gutters and is commonly known by that name;

-       There is no evidence that Respondent registered or is using the disputed domain name in bad faith; and

-       While Complainant has been aggressive in its actions, the Complaint does not rise to the level of abuse needed to find reverse domain name hijacking as there appears to be a legitimate trademark dispute between the parties.

 

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

Complainant asserts rights in the GUTTER BROTHERS trademark through its registration at the USPTO. Registration of a mark in this manner is a typically a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) ("Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).") However, where an asserted registration consists of a design mark and the relevant words have been disclaimed apart from the mark as a whole, this requires the complainant to provide additional evidence that the words have acquired secondary meaning and, thus, status as a trademark as required by Policy ¶ 4(a)(i). See UDRP Perspectives on Recent Jurisprudence, § 1.5 (updated June 2, 2025), available at https://udrpperspectives.org ("Where an asserted registration consists of a design mark and the relevant words have been disclaimed apart from the mark as a whole, this requires the Complainant to provide additional evidence that the words have acquired a secondary meaning and, thus, status as a trademark as required by policy.") Also WIPO Jurisprudential Overview 3.1, at ¶1.2.3 ("if the similar elements of the domain name are made up exclusively of disclaimed terms, trademark rights under the Policy may not be found unless the complainant can show sufficient secondary meaning in the disclaimed terms."); and Id. at ¶1.10 ("Where the trademark registration entirely disclaims the textual elements (i.e., the scope of protection afforded to the mark is effectively limited to its stylized elements), panels may find that the complainant's trademark registration is insufficient by itself to establish confusing similarity."). In Bert & Wetta Sales, Inc. v. Ron Seibold, FA 1980161 (Forum Feb. 23, 2022), it was noted that "the USGREENS Trademark registration contains an important disclaimer: 'No claim is made to the exclusive right to use 'USGREENS' apart from the mark as shown.'" In denying a claim against the domain name <usgreens.com>, the Panel found that "Complainant has not proven the first element of the Policy." Id.

 

Here, Complainant submits a screenshot from the USPTO database showing some of the details for its registration for the mark THE GUTTER BROTHERS INC. SEAMLESS GUTTERS in a graphic logo form. While Complainant's exhibit does not reflect this, Respondent points out that this registration contains the statement "No claim is made to the exclusive right to use the words THE GUTTER BROTHERS and SEAMLESS GUTTERS apart from the mark as shown". This is typical disclaimer language and the USPTO has indicated that "[t]he purpose of a disclaimer is to permit the registration of a mark that is registrable as a whole but contains matter that would not be registrable standing alone…." See Trademark Manual of Examining Procedure §1213, citing 15 U.S.C. §1056. Thus, the USPTO has determined that the "GUTTER BROTHERS" textual portion of Complainant's trademark are not registrable and do not, on their own, function as a trademark. This leads the Panel to find that Policy ¶ 4(a)(i) has not been satisfied by Complainant's submission of its trademark registration.

 

However, Complainant further claims common law rights in the term GUTTER BROTHERS and, if proven, common law trademark rights are sufficient to satisfy Policy ¶ 4(a)(i). Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) ("A complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out".) In support of its claim, Complainant submits a screenshot from the Pennsylvania Department of State showing a May 20, 2005 filing of a Domestic Business Corporation named THE GUTTER BROTHERS, INC. However, it must be noted that corporate registrations and trade names are not the legal equivalent of a trademark. Center for Financial Training Atlantic & Central States, Inc. v. Zsolt Bikadi, FA 2051938 (Forum Aug. 4, 2023) ("There is no indication from either certificate that the relevant state performs any kind of examination or review of an application for a trademark" and "UDRP panels have been reluctant to find rights in a mark based upon unexamined U.S. state registrations.") The Complainant also submits an image of an April 4, 2007 newspaper claiming to show use of the GUTTER BROTHERS mark at that time but this is largely illegible and very grainy when magnified. Also submitted is a document titled "Certificate of Authenticity" stating "These Colors were flown over Camp Ramadi, Iraq, During Operation Iraqi Freedom II 05-07.2 for The Gutter Brothers Grid: 38S LC 36285 01638 Date: February 17, 2007" but the Panel notes that this exhibit does not show use of the claimed mark in commerce. Complainant further submits an undated photo of a truck showing THE GUTTER BROTHERS phrase on its driver's door as well as a Facebook page for Gutter Brothers showing the notation "1K followers" and an additional photo of vehicles displaying Complainant's full graphic logo. While this evidence does show some use of the Complainant's logo, the Panel finds that it is rather sparse and, in any event, insufficient to demonstrate that the GUTTER BROTHERS textual portion of the logo has gained sufficient distinctiveness such that the existence of common law trademark rights may be claimed in these words.

 

In light of the above, the Panel is unable to conclude, by a preponderance of the evidence presented, that Complainant has met the threshold requirement of proving trademark rights under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Even if Complainant had demonstrated its ownership of trademark rights, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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").

 

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because it "has never licensed or authorized the Respondent to use the 'Gutter Brothers' mark" and "Respondent's primary brand is 'The Brothers that just do Gutters.' The use of the inverted 'Brothers Gutters' is a tactical choice to capture traffic belonging to the senior user." This does not address the question of whether Respondent is making a bona fide offering of services under the domain name. It is noted that one of Complainant's exhibits shows a vehicle imprinted with Respondent's logo on its door and it further makes mention of communications between the parties, in 2015, in which a buyout offer of Respondent was made by Complainant. The Panel views this as some evidence that Respondent is commonly known by its full name "The Brothers That Just Do Gutters" or a shorthand version thereof as embodied in the disputed domain name. As such, Respondent's assertion that it "has made bona fide commercial use of the domain since 2008, and operates a legitimate national business called THE BROTHERS THAT JUST DO GUTTERS through the domain <brothersgutters.com>" is well-founded and satisfies Policy ¶ 4(c)(i) and possibly ¶ 4(c)(ii).

 

In light of the above, the Complainant has not made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and, even if it had, this has been adequately rebutted by Respondent.

 

Registration and Use in Bad Faith

As Complainant has not carried its burden of showing that Respondent has no rights or legitimate interests in the disputed domain name, it is unnecessary to fully analyze ¶ 4(a)(iii) of the Policy relating to bad faith registration and use of the domain name. Nevertheless, the Panel notes that the parties have been engaged in various disputes at the USPTO (e.g., Complainant has lodged a letter of protest against one of Respondent's trademark applications and has filed a currently-pending cancellation action against one of Respondent's trademark registrations). The Panel further notes that Respondent lists addresses in Wappingers Falls, New York and Scottsdale, Arizona, whereas Complainant is located in Springfield, Pennsylvania. No evidence is submitted by either party delineating the geographic scope of their respective business. Overall, the presented evidence suggests that this is, in fact, a broader trademark dispute involving questions of infringement and the geographic scope of rights. Thus, there is insufficient evidence that Respondent registered the disputed domain name in 2008 in a bad faith effort to target the Complainant or its mark.

 

Finally, there is the question of Complainant's delay in bringing the present action. While the concept of laches does not apply in UDRP proceedings, WIPO Overview 3.1, at par. 4.17, the Complainant's long delay in pursuing a 2008 domain name (i.e., 18 years) calls into question its claim that the domain name "is actively harming our business" and suggests that the matter is not so urgent that it cannot be resolved by a court of law.

 

REVERSE DOMAIN NAME HIJACKING

Respondent argues that Complainant has engaged in reverse domain name hijacking (RDNH), under Rule 15(e) of the Policy based on its delay in bringing the present case and its attempted use of the Policy to wrest control of the disputed domain name from Respondent despite its lack of trademark rights in the phrase GUTTER BROTHERS and its awareness of Respondent's bona fide commercial use of the disputed domain name for many years. Rule 15(e) provides:

 

If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in the decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

 

RDNH has been found in a variety of circumstances, the most common being where a complainant knew that its case was doomed to failure or there was an ulterior purpose, namely, to increase negotiating leverage in settlement discussions. See Electrosoft Services, Inc. v. TechOps / SyncPoint, FA1969515 (Forum Dec. 9, 2021). 

 

While the facts of this case leads the Panel to suspect that Complainant is taking a rather aggressive position, the question remains of whether it owns trademark rights in the phrase GUTTER BROTHERS and, if so, to what extent these may be successfully enforced against Respondent's use of a brand name – and domain name – that contains these words in relation to gutter repair and installation services performed by individuals who are, in fact, brothers. This involves broader issues of trademark law which, although outside the scope of the Policy, provides Complainant with just a sliver of legitimacy and leaves the Panel unable to find that this case has been pursued in bad faith or primarily to harass Respondent. On this basis, the Panel finds that the scale tips against a finding of RDNH

 

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 <brothersgutters.com> domain name REMAIN WITH Respondent.

 

 

 

Steven M. Levy, Panelist

Dated: April 2, 2026