Kittrich Corporation v. Franco DelBello / Eco Smart Pest Control
Claim Number: FA1711001758524
Complainant is Kittrich Corporation (“Complainant”), represented by Mark A. Calkins of Kittrich Corporate Offices, California, USA. Respondent is Franco DelBello / Eco Smart Pest Control (“Respondent”), Hawaii, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ecosmartpestcontrol.com>, registered with Tucows Domains 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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 14, 2017; the Forum received payment on November 14, 2017.
On November 15, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <ecosmartpestcontrol.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 November 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 2017 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 firstname.lastname@example.org. Also on November 16, 2017, 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 December 3, 2017.
On December 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 name be transferred from Respondent to Complainant.
- Through its predecessor in interest, Complainant has been in business regarding bio-pesticides and related products since at least 1998. In connection with that business, it has operated online using the domain name, <ecosmart.com>, since 2000.
- Complainant has registered the ECOSMART trademark with the United States Patent and Trademark Office ("USPTO"), as well as with at least twenty other trademark authorities throughout the world.
- The disputed domain name, <ecosmartpestcontrol.com>, is confusingly similar to Complainant's ECOSMART mark. The name includes the full mark and adds the generic term, "pest control," which is related to Complainant's business and mark and, as a result, creates no meaningful distinction between name and mark.
- Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its ECOSMART mark in any fashion, and Respondent, Frank DelBello, is not commonly known as <ecosmartpestcontrol.com>.
- The disputed domain name was registered and is being used in bad faith. Respondent attempts to disrupt Complainant’s business by using the confusingly similar disputed domain name to divert internet traffic to Respondent’s competing website. Respondent also attempts to use the disputed domain name to attract internet traffic by creating confusion as to the source, sponsorship, affiliation, or endorsement of its content for Respondent’s commercial gain.
- "Ecosmart" is a very common name and is widely used in commerce by many companies in many industries, including pest control. A Google search of that name returns over a million results, bringing up companies involved with water heaters, light bulbs, fireplaces, pest reduction, etc. Complainant's references to "Disney" and "Microsoft" are inappropriate, because those brands are unique to their respective owners.
- In 1989, Respondent's predecessor in interest founded a company in Hawaii that was dedicated to flea eradication and called "Fleabusters of Hawaii." That entity was incorporated as Eco Techniques, Inc. in 1995, and expanded the next year to cover greater pest control issues. Thus, in 1996 it coined the name "Eco Smart Pest Control," which it used in advertisements and telephone directories starting that year.
- In 2007, said predecessor in interest registered the disputed domain name, <ecosmartpestcontrol.com>, to help conduct its pest control business. The website connected with that name offers Ceder Bug-Free products for sale.
- In 2017, Respondent purchased Eco Techniques, Inc. and obtained ownership of the disputed domain name. Respondent uses the name in good faith to advertise and promote its pest control business and affiliated products.
- Respondent requests that the Panel issue a ruling of reverse domain name hijacking. As early as 2009, Respondent's predecessor in interest informed Complainant's predecessor in interest of the former predecessor's right to use the "Eco Smart Pest Control" name, notwithstanding the latter predecessor's trademark rights. Again in 2014, Respondent's predecessor's attorney reiterated the same argument, explaining that the predecessor had used its company name prior to Complainant's predecessor filing for USPTO trademark registration. That attorney, requesting a reply from Complainant's predecessor's attorney, offered to supply supporting materials and documents. No reply ever followed; only the present UDRP filing. Given this history, this filing by Complainant was made in bad faith.
Complainant is a well-established American company that has, along with its predecessor in interest, marketed bio-pesticides and related products since at least 1998. Its operations have been conducted under the ECOSMART trademark, for which it has obtained registrations with appropriate authorities throughout the world, including with the USPTO (e.g., Reg. No. 2,972,176, registered July 19, 2005).
Respondent owns the disputed domain name, <ecosmartpestcontrol.com>. That name was registered by a predecessor in interest on October 1, 2007 and acquired by Respondent on March 31, 2017. Respondent owns and operates a company based in Hawaii that offers pest eradication services and has used the name, "Eco Smart Pest Control," since 1996.
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.
Complainant has presented the Panel with appropriate evidence (Complaint Exhibits A-D) that Complainant owns valid USPTO trademark registrations for the ECOSMART mark, and thus the Panel concludes that Complainant possesses the requisite rights in that mark to satisfy Policy ¶ 4(a)(i)). See Beyoncé Giselle Knowles-Carter v. Chanphut, FA 1626334 (Forum Aug. 3, 2015) ("Complainant’s trademark registrations sufficiently demonstrate its rights pursuant to Policy ¶ 4(a)(i)."); see also Expedia, Inc. v. Emmerson, FA 873346 (Forum Feb. 9, 2007) ("Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the mark pursuant to Policy ¶ 4(a)(i).").
Policy panels have held consistently that a complainant need present only a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name before shifting the burden to that respondent to come forward with clear evidence that it does have such rights or legitimate interests. See Hermès International v. Moser; D2011-0406 (Wipo Apr. 7, 2011) ("It is the consensus view of WIPO UDRP panelists that once a complainant has established a prima facie case, it is respondent’s responsibility to prove otherwise."); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
In this case, the Panel has found that the disputed domain name is confusingly similar to Complainant's ECOSMART trademark. Furthermore, Complainant has contended, without contradiction, that it did not license or otherwise authorize Respondent to use that mark in a domain name or in any other manner. In the Panel's view, this constitutes a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
Policy ¶ 4(c) suggests three ways in which Respondent might rebut Complainant's prima facie case:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial 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.
With respect to these criteria, Respondent has provided the Panel with concrete evidence (Response Exhibit F) that its predecessor in interest operated under the brand name, "Eco Smart Pest Control," since 1996. The Panel accepts the validity of that evidence and concludes that it is entirely likely that said predecessor -- and, by extension, Respondent -- has been commonly known as the disputed domain name, <ecosmartpestcontrol.com>, in accordance with Policy ¶ 4(c)(ii). Moreover, it is also apparent from the evidence supplied by Respondent that he and his predecessor in interest used the disputed domain name to sell pest eradication services, i.e., to engage in a bona fide offering of services per Policy ¶ 4(c)(i). In conclusion, it is the judgement of the Panel that Respondent has effectively rebutted Complainant's prima facie case and that Respondent does indeed have rights and legitimate interests in the disputed domain name.
Accordingly, the Panel finds that Complainant has failed to show that Respondent lacks rights and legitimate interests in the disputed domain name.
Since Complainant has failed to sustain its claims with respect to the second element required under the Policy, the Panel will not consider whether the disputed domain name was registered and is being used in bad faith.
Reverse Domain Name Hijacking
Respondent has requested of the Panel that it issue a ruling that Complainant has engaged in an attempt at reverse domain name hijacking. In considering that request, the Panel notes that this is defined in Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Moreover, Rule 15(e) provides as follows: 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 its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
In this case, the Panel was able to conclude rather quickly, based upon Respondent's submissions, that Respondent had rights and legitimate interests in the disputed domain name. Most critically, the submissions contained clear evidence of Respondent's predecessor in interest having used the name, "Eco Smart Pest Control," in its operations as early as 1996, which predates the formation of Respondent's predecessor in interest and the earliest registration filing for the trademark at issue. It is the opinion of the Panel that Complainant should have come readily to such a conclusion also, and should have not filed the Complaint. See Sweet Art Co. LLC v. Sweet Art, Inc., FA 1617812 (Forum July 31, 2015) ("Where a Complainant proceeds despite the fact that it knew or should have known that it did not have a colorable claim under the Policy, a finding of RDNH may be appropriate."); see also PFIP, LLC v. Jud, FA 1577082 (Forum Sept. 26, 2014); see also Viking Office Prods., Inc. v. Flaherty, FA 1383534 (Forum May 31, 2011).
The Panel makes this determination in particular because of the letters exchanged between the predecessors in interest of both parties in October, 2014, which were included in Respondent's filing (Response Exhibits L and M). In the latter letter, the attorney representing Respondent's predecessor states its willingness to supply such materials and documents necessary to establish its rights to the "Eco Smart Pest Control" brand name dating back to 1996. Apparently and crucially, there was never a response to that offer from either Complainant or its predecessor.
The Panel notes that Complainant acquired its predecessor in interest in November, 2014, about a month after said letter exchange, but this does not absolve Complainant from having made a bad faith filing in the Panel's view. UDRP complaints should not be filed in a careless or frivolous manner, but should result from a careful examination of facts and history, including the prior communications and demands of a complainant's predecessor(s) in interest. See Sweet Art Co., supra, ("The Panel does not consider the Complainant's claimed change of ownership sufficient to explain its purported lack of knowledge of the history between the parties...").
As a result, the Panel finds it appropriate to issue a finding of reverse domain name hijacking in this case.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED, and finds that the Complaint was brought in bad faith, and constitutes an abuse of the administrative proceeding.
Accordingly, it is Ordered that the <ecosmartpestcontrol.com> domain name REMAIN WITH Respondent.
Dennis A. Foster, Panelist
Dated: December 19, 2017
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