National Overspray Removal, LLC v. jeff suggs
Claim Number: FA1906001846645
Complainant is National Overspray Removal, LLC (“Complainant”), represented by Evan Stone, Texas, USA. Respondent is jeff suggs (“Respondent”), represented by Bradley A. Nevills of Kearney, Mc Williams & Davis, PLLC, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationaloversprayremovalservice.com>, registered with Register.com, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 5, 2019; the Forum received payment on June 5, 2019.
On June 6, 2019, Register.com, Inc. confirmed by e-mail to the Forum that the <nationaloversprayremovalservice.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 June 7, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2019 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 June 7, 2019, 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 June 26, 2019.
On July 1, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
Complainant is engaged in the mobile cleaning of vehicles and buildings under the trademark NATIONAL OVERSPRAY REMOVAL. It has rights in this mark through its registration thereof with the United States Patent and Trademark Office (“USPTO”). Such registration was issued on March 5, 2019 based on an application filed on December 11, 2017 and it claims that the mark was first used in commerce on June 5, 2010. Respondent’s <nationaloversprayremovalservice.com> domain name, registered on May 12, 2010, is confusingly similar to Complainant’s mark as it encompasses the exact same phrase as the mark and merely adds the additional word, “services.”
Respondent has no rights or legitimate interests in the <nationaloversprayremovalservice.com> domain name because it is diverting consumers from Complainant’s business to Respondent’s website and business for commercial gain. Specifically, Complainant and Respondent are both Texas-based competitors in a specialized cleaning field and Respondent uses the disputed domain name to serve the same potential client base as Complainant.
Respondent registered and is using the disputed domain name in bad faith. Respondent is in competition with Complainant in the same field of business and has created an extremely high risk of consumer confusion as well as the disruption of Complainant’s business.
Respondent’s <nationaloversprayremovalservice.com> domain name was registered before Complainant’s trademark rights came into existence. Specifically, the disputed domain name was registered on May 12, 2010, nearly one month prior to Complainant’s claimed June 5, 2010 date of first use in commerce as stated in its USPTO registration.
Respondent has been operating under the business name “National Overspray Removal Services” since 2011. Respondent has published and uploaded approximately three hundred videos regarding Respondent’s services since 2010. Respondent registered the disputed domain name in an attempt to amplify and optimize Respondent’s online presence and business operations.
Respondent has not engaged in bad faith in registration or use of the disputed domain name. Respondent has no desire, nor has it ever had the desire, to transfer or sell its domain name. Respondent did not register the disputed domain name for the purpose of disrupting Complainant’s business but only to further its own online presence. Complainant applied for the NATIONAL OVERSPRAY REMOVAL mark only after Respondent registered the disputed domain name.
(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) the Panel declines to make any findings under Policy ¶ 4(a)(ii); and
(3) the Panel finds that the disputed domain name has not been registered in bad faith; and
(4) the Complainant has engaged in reverse domain hijacking by virtue of its bringing the present case in bad faith.
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.
Preliminary Issue: Concurrent Court Proceedings
Both parties acknowledge that there is an active case in the 55th District Court of Harris County, Texas, in connection with the Respondent’s business name and domain name (Case No. 201739621) styled as National Overspray Removal, LLC v. Jeffrey Allen Suggs. The case is set for a hearing for default judgment on August 2, 2019.
Respondent claims that Complainant attempted to enjoin Respondent's use of the disputed domain name in that lawsuit through Complainant's application for a temporary injunction. Respondent goes on to claim that the Court agreed with Respondent that no claim of infringement by Complainant against Respondent rose to the level of merit required to procure such extraordinary relief.
In situations where concurrent court proceedings are pending, panels have carefully considered whether or not to proceed with a UDRP case. In some situations, UDRP Panels have decided to proceed with the case. See eProperty Direct LLC v. Miller, FA 836419 (Forum Jan. 3, 2007) (holding that the panel could decide the dispute under Rule 18(a) of the Policy “since the legal proceedings referred to by the parties appear to be concluded and Orders made. Moreover,… those Orders do not touch directly on the disposition of the disputed domain name or on the parties’ intellectual property rights.”); see also W. Fla. Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008) (deciding to proceed under the UDRP despite concurrent court proceedings because “the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation”); see also Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Forum Aug. 13, 2007) (choosing to proceed under the UDRP despite concurrent court proceedings for multiple reasons, including that the proceedings appeared to be filed in a court that did not commonly adjudicate intellectual property issues and that the court proceedings were filed by the respondent on the same day the response in these proceedings was filed).
Alternatively, other Panels have chosen not to proceed with the UDRP case because of a pending litigation. See AmeriPlan Corp. v. Gilbert FA105737 (Forum Apr. 22, 2002) (Regarding simultaneous court proceedings and UDRP disputes, Policy ¶ 4(k) requires that ICANN not implement an administrative panel’s decision regarding a UDRP dispute “until the court proceeding is resolved.” Therefore, a panel should not rule on a decision when there is a court proceeding pending because “no purpose is served by [the panel] rendering a decision on the merits to transfer the domain name, or have it remain, when as here, a decision regarding the domain name will have no practical consequence.”)
In the present case, the Panel notes that although both parties have mentioned the pending litigation between them in Harris County, Texas, neither has submitted into evidence copies of any pleadings, orders, or other documents relating to that case. As such, this Panel is unable to determine or verify the nature, status, or impact of this litigation and so declines to consider the matter. It will, therefor, proceed with the present UDRP case.
Complainant claims to have rights in the NATIONAL OVERSPRAY REMOVAL mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to show rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”) Here, Complainant has provided the Panel with a copy of its registration for the NATIONAL OVERSPRAY REMOVAL mark. The Panel notes that the registration of Respondent’s disputed domain name predates both Complainant’s USPTO application as well as the claimed date of the mark’s first use in commerce, both of which may show the relevant first date on which Complainant acquired rights to its mark. See Micha Advanced Health dba LEMYKA v. Shanshan Huang / This domain name is for sale, FA 1772893 (Forum Apr. 9, 2018) (“The relevant date for acquiring rights in a registered mark is the application filing date.”) Nevertheless, this standing element of Policy ¶ 4(a)(i) concerns itself not with timelines but only with the binary question of whether or not a complainant possesses any rights in the trademark being asserted in the case. City of Pompano Beach v. Dolphin Ope, Inc, FA 1844961 (Forum June 26, 2019), citing The Landmark Group v. DigiMedia.com, L.P., FA 285459 (Forum Aug. 6, 2004) (“under the first factor—which is a kind of threshold factor designed to determine whether Complainant has standing—the issue is only whether Complainant has trademark rights today and, if so, whether the domain name is identical or confusingly similar to that mark.”); Greenvelope, LLC v. Virtual Services Corporation, D2017-0006 (WIPO Feb. 25, 2017) (“The Panel observes that the Domain Name was registered in July 2006, predating Complainant's trademark. However, for purposes of the first element under paragraph 4(a) of the Policy, the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights.”). The Panel thus finds that Complainant possesses rights to its claimed trademark for purposes of Policy ¶ 4(a)(i).
Complainant further argues that Respondent’s <nationaloversprayremovalservice.com> domain name is identical or confusingly similar to Complainant’s mark as it encompass Complainant’s mark in its entirety and merely adds the additional word “services.” The Panel notes that while Complainant does not specifically assert this, the disputed domain name also contains the “.com” generic top-level domain (“gTLD”). The addition of a descriptive word and a gTLD to a fully formed mark does not distinguish the domain name from a mark per Policy ¶ 4(a)(i). See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds that Respondent’s <nationaloversprayremovalservice.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
In light of its findings on Policy ¶ 4(a)(iii) the Panel determines that it is unnecessary to make any findings with respect to Policy ¶ 4(a)(ii) and thus declines to do so.
The Panel finds that Complainant has failed to meet its burden of proving bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
Specifically, the Panel notes that Respondent’s registration of the <nationaloversprayremovalservice.com> domain name predates Complainant’s earliest claim of rights in its NATIONAL OVERSPRAY REMOVAL mark. Under such circumstances, a complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (Respondent registered the domain name before Complainant introduced its mark in commerce. “Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”)
Here, the evidence of record indicates that the earliest date on which the Complainant can claim rights to its mark is June 5, 2010. This is the date on which the mark was first used in commerce as submitted to the USPTO by Complainant in its trademark application that ultimately resulted in the registration certificate that is of evidence in this case. However, the disputed domain name was registered by Respondent on May 12, 2010 as noted in the copy of the domain’s Whois record that was also submitted by the Complainant. Thus, Complainant’s trademark rights in the NATIONAL OVERSPRAY REMOVAL mark did not exist at the time that Respondent registered the <nationaloversprayremovalservice.com> domain name and there is no claim by Complainant nor any evidence in the record that the Respondent opportunistically anticipated the Complainant’s trademark by registering the disputed domain name. In light of the evidence of record, the Panel finds that Complainant has failed to meet its burden of proof under Policy ¶ 4(a)(iii).
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking (“RDNH”) by initiating this dispute. Paragraph 1 of the Rules defines RDNH as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the disputed domain name, of its rights to use the domain name. Respondent notes that it registered the disputed domain prior to the earliest date on which Complainant’s trademark rights came into existence. Thus, Respondent asserts that Complainant knew or should have known that it was unable to prove that Respondent registered the disputed domain name in bad faith.
The Panel finds there is sufficient evidence to this effect, and holds that RDNH has occurred. See Walker Edison Furniture Company LLC v. Manor Park (Guernsey) Ltd, FA 1784458 (Forum June 15, 2018) (reverse domain name hijacking found where “Complainant must have been aware, at the time the Complainant was filed, that there was no valid trademark usage by Complainant predating Respondent’s May 18, 2000 registration of the domain name.”); BidPal, Inc. v. Robert Bottorff / triptych, FA 1804116 (Forum Oct. 11, 2018) (reverse domain name hijacking found where the Respondent’s domain name was registered prior to the earliest date of the Complainant’s trademark rights). See also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”). For the above-stated reasons, the Panel finds that Complainant has engaged in reverse domain name hijacking in the present case as it should have known that its Complaint had no possibility of success based upon the Respondent’s registration of the disputed domain name prior to the earliest date on which the Complainant claims trademark rights.
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 <nationaloversprayremovalservice.com> domain name REMAIN WITH Respondent.
Steven M. Levy, Esq., Panelist
Dated: July 2, 2019
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