Paulson's Construction, Inc. and Paul McClorey v. Justin Hamel
Claim Number: FA1310001523901
Complainant is Paulson's Construction, Inc. and Paul McClorey (“Complainant”), represented by Dale F. Schaller of Schaller Law Firm, PLC, Michigan, USA. Respondent is Justin Hamel (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <paulsonsconstruction.net>, <paulsonsconstruction.org>, <kensingtonvalleyexteriors.com>, <kvexteriors.net>, <kvexteriors.org>, <paulmcclorey.com>, <paulmcclorey.net>, and <paulmcclorey.org>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Jeffrey M. Samuels, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 10, 2013; the National Arbitration Forum received payment on October 10, 2013.
On October 14, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <paulsonsconstruction.net>, <paulsonsconstruction.org>, <kensingtonvalleyexteriors.com>, <kvexteriors.net>, <kvexteriors.org>, <paulmcclorey.com>, <paulmcclorey.net>, and <paulmcclorey.org> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 October 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 2013 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@paulsonsconstruction.net, postmaster@paulsonsconstruction.org, postmaster@kensingtonvalleyexteriors.com, postmaster@kvexteriors.net, postmaster@kvexteriors.org, postmaster@paulmcclorey.com, postmaster@paulmcclorey.net, postmaster@paulmcclorey.org. Also on October 21, 2013, 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 November 1, 2013.
On November 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant Paulson’s Construction, Inc. is a home construction and remodeling company that was incorporated in the State of Michigan on December 30, 1998. In November 2012, Complainant filed for an assumed name of Kensington Valley Exteriors. Complainant asserts that the names “Paulson’s Construction” and “Kensington Valley Exteriors” are trademarks belonging to Complainant and have been used in commerce continually since the respective filings with the State of Michigan. Paulson’s Construction owns the domain name <www.paulsonconstruction.com>, which was registered on April 20, 2000.
Complainant Paul McClorey is the owner and president of Paulson’s Construction and his name is allegedly used in commerce in connection with Paulson’s Construction and Kensington Valley Exteriors and is synonymous with Paulson’s Construction in the sale of goods and services for home construction and remodeling.
Complainants contend that the disputed domain names are either identical to its trademarks or consist of the actual name of Complainant Paul McClorey.
Complainants argue that Respondent has no rights or legitimate interests in any of the disputed domain names. It maintains that Respondent is not using the domain names in connection with a bona fide offering of goods or services, is not, and has not been, commonly known by any words within the disputed domain names and is using the domain names for the express purpose of tarnishing Complainants’ trademarks.
According to Complainants, Respondent has indicated that he registered the domain names to prevent Complainants from reserving the names for their legitimate business. Exhibit E to the Amended Complaint consists of Respondent’s wordpress.com page in which Respondent indicates, in part, that he registered the domain names paulmcclorey.com, paulmcclorey.net, and paulmcclory.org because “[c]ompany names can be changed with a couple of clicks of a mouse, government names not so much so….”
With respect to the issue of “bad faith” registration and use, Complainants assert that Respondent registered each of the domain names in order to prevent Complainants from reflecting the marks Paulson’s Construction, Kensington Valley Exteriors and Paul McClorey in a corresponding domain name. “Respondent continues to use the disputed domain names in bad faith and to tarnish the names of Paulson’s Construction, Kensington Valley Exteriors, and Paul McClorey. A simple review of the content posted on the disputed domains demonstrates respondent’s bad faith, in that respondent is using the disputed domains to carry out a negative campaign against complainants with a goal of tarnishing complainant’s reputation and destroying complainant’s business.”
B. Respondent
Respondent Justin Hamel is a homeowner in Howell, Michigan. Hamel hired Paulson’s Construction to do remodeling work in August 2012. See Response, Exhibit A. Respondent indicates that he paid Complainant over $18,000 for the remodeling work but that such work was so substandard that the construction process came to a halt. See Response, Exhibits E, F, G and H. An inspection report, dated November16, 2012, noted, in part, that “[n]early every part of the project has to be removed and re-installed or replaced. … The cost of repairs will be equal to or will exceed the original cost for the work. “ See Response, Exhibit C. Respondent indicates that he “was sick to his stomach and simply wanted to share his experiences with other homeowners when registering [the] disputed domains.”
Respondent indicates that, using the uspto.gov website, he was unable to find a registered trademark for the terms Paulson’s Construction, Paul McClory, Kensington Valley Exteriors, or kvexteriors and that none of these terms is a legitimate service mark. He further contends that he “is in no way, shape, or form” trying to confuse the public about his affiliation with Complainant. Respondent points out that the disputed domains resolve to sites that state “Honest Reviews of Paulson’s Construction. View tons of pictures of Paulson’s Construction home improvement and remodel work from late 2012 in Howell, Michigan. Very Important you view these pictures before” and “Paulson’s Construction / Howell, Michigan – Paulson’s Construction TOP 5 Lines around the web. Have you or someone you know ever been a victim of Paulson’s Construction? Share your concerns here.” According to Respondent, the sites also feature, in big bold letters, “Paulson’s Construction Sucks,” “Paulson’s Construction Slimy Tactics,” “Paulson’s Construction Fail, Beware of Paul McClory,” “6 ways to protect yourself” and other terms that nobody could interpret as being affiliated or endorsed by Complainant.
Respondent indicates that while Complainant’s <paulsonsconstruction.com> site includes the phrase “Paul McClory SM,” such text was added only after Respondent registered the disputed domain names.
On the issue of “rights or legitimate interests,” Respondent explains that some of the disputed domain names resolve to blog type websites that relate to the contracted home remodel work he received from Complainant and current litigation updates between the parties. The sites also include news published by the media, videos showing Respondent’s current reporting on current developments on the home remodel work attempted by Complainant and other content related to the litigation. According to Respondent, his use of these domain names represents a nominative fair use of Complainant’s mark, which is protected under paragraph 4(c)(iii) of the Policy and under U.S. trademark law. Respondent explains that he does not have enough funds at this time to build out the other disputed domains and, as a result, these domains currently resolve to the domain name register parking page. Respondent adds that “[a]ll the disputed domains were never intended to be used commercially, and the respondent has not received any money from the use of the disputed domain names.”
Respondent contends that all the disputed domain names are done on a noncommercial basis, he registered the domain names in good faith with the intention of sharing his experiences and opinions about doing business with Complainant, and that he makes it very clear that he is not affiliated with or endorsed by Complainant. Thus, Respondent argues, none of the disputed domain names was registered and is being used in bad faith.
Respondent concludes by contending that “it is very clear the complainant is trying to use the ICANN cybersquatting policy to remove free speech from the internet. … The ICANN Policy was created to address the problem of cybersquatting. It is not intended to address other types of problems that can be associated with domain names and/or website content.”
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
In this case, the evidence establishes that Complainant Paul McClorey is the owner and president of Complainant Paulson’s Construction, Inc. In the panel’s opinion, such relationship provides the necessary nexus so that Mr. McClorey and Paulson’s Construction may be treated as a single entity in this proceeding.
See Vancouver Org. Comm. For the 2010 Olympic and Paralympic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. AR. Forum May 12, 2006).
The Panel concludes that Complainant has failed to meet its burden of establishing that the disputed domain names are identical or confusingly similar to a trademark or service mark in which it has rights. In view of its decision on this element of the Policy, the Panel declines to address the other elements of the Policy.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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.
In most cases brought under the Policy, a complainant establishes rights in its alleged marks through evidence of ownership of a national registration. There is no such evidence in this case. However, the Policy also recognizes unregistered or common law rights in a mark. Under the Policy, to establish such common law rights, a complainant must show that the term(s) in issue have become a distinctive identifier associated with complainant’s goods or services. Relevant evidence includes length of use, amount of sales under the alleged mark, the nature and extent of advertising, consumer surveys and media recognition. Conclusory allegations of common law rights normally do not suffice. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ¶1.5.
In view of the Panel’s conclusion that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the terms in issue, the Panel declines to analyze this element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
In view of the Panel’s conclusion that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the terms in issue, the Panel declines to analyze this element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <paulsonsconstruction.net>, <paulsonsconstruction.org>, <kensingtonvalleyexteriors.com>, <kvexteriors.net>, <kvexteriors.org>, <paulmcclorey.com>, <paulmcclorey.net>, and <paulmcclorey.org> domain names REMAIN WITH Respondent.
Jeffrey M. Samuels, Panelist
Dated: November 19, 2013
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