Pueblo Mechanical & Controls, LLC v. Elizabeth Kerr
Claim Number: FA2103001938026
Complainant is Pueblo Mechanical & Controls, LLC (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is Elizabeth Kerr (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <peublo-mechanical.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 26, 2021; the Forum received payment on March 26, 2021.
On March 27, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <peublo-mechanical.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 30, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 2021 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@peublo-mechanical.com. Also on March 30, 2021, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 22, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it was founded in 2001 and performs HVAC service and installation for school districts, governmental agencies, municipalities, and private firms. It has completed over 3,800 HVAC projects and provides a broad range of HVAC services, including central plant retrofits, cooling and fluid cooling tower repair and replacement, preventative maintenance services, mechanical piping, heat applications, duct fabrications and installation, refrigerant supply and environmental reclamation, complete exhaust and fume elimination services, humidity control, leasing services, chiller and boiler repair and replacement, and system testing and balance services. Complainant has common law trademark rights in the PUEBLO MECHANICAL mark through longstanding use of the mark, Complainant’s identical domain name, and the media recognition of Complainant’s mark.
Complainant alleges that the disputed domain name is confusingly similar to its PUEBLO MECHANICAL mark as it consists of a misspelling of the mark (the letters “E” and “U” are swapped), with the addition of a hyphen and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the PUEBLO MECHANICAL mark in any way. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as the resolving websites hosts commercial pay-per-click advertising links to unrelated products and services.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent has attempted to divert internet traffic for personal gain. Additionally, Respondent is using the disputed domain name in pursuance of a phishing scheme. And Respondent has exhibited a pattern of bad faith registration and use. Further, Respondent has engaged in typosquatting. Finally, Respondent registered the disputed domain name with actual knowledge of the Complainant’s rights in the PUEBLO MECHANICAL COM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark PUEBLO MECHANICAL dating back to at least 2003 and uses it to provide HVAC services.
The disputed domain name was registered in 2021.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain names to resolve to a website that contains links to products and services that are not related to those of Complainant.
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 view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts common law trademark rights in the PUEBLO MECHANICAL mark because the mark has acquired secondary meaning through Complainant’s longstanding use of the mark, Complainant’s identical domain name, and the media recognition of Complainant’s mark. Specifically, Complainant provides evidence showing that Complainant’s official domain name <pueblo-mechanical.com> was registered on March 5, 2003; Complainant’s website displays the PUEBLO MECHANICAL mark; many of Complainant’s acquisitions were discussed through unsolicited reports in the media. When a complainant lacks a registered trademark, common law rights in a mark may satisfy Policy ¶ 4(a)(i). See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Additionally, secondary meaning can be evidenced by longstanding use, holding an identical domain name, advertising, and media recognition of the mark. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Based on the evidence in the file, the Panel finds that Complainant has demonstrated rights in the PUEBLO MECHANICAL mark, dating back to at least 2003, per Policy ¶ 4(a)(i).
The disputed domain name consists of a misspelling of Complainant’s PUEBLO MECHANICAL mark (the letters “E” and “U” are swapped/transposed), with the addition of a hyphen, and the gTLD “.com”. Such changes fail sufficiently to distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Oracle International Corporation v. DAINA TRADING COMPANY LIMITED, FA 1612604 (Forum May 11, 2015) (finding confusing similarity in all disputed domain names where “[t]he <oralce.com> domain name transposes the letters ‘l’ and ‘c.’ The <orcale.com> domain name transposes the letters ‘c’ and ‘a.’ The <oracel.com> domain name transposes the letters ‘e’ and ‘l.’” Thus, the Panel held, “There is confusing similarity where a disputed domain name merely transposes letters of a registered mark (at least where the first several letters remain the same).”); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: when no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain names where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). Here, the WHOIS information of record lists the registrant as “Elizabeth Kerr”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The resolving website displays pay-per-click advertising hyperlinks unrelated to Complainant. Using a confusingly similar domain name to divert internet traffic for commercial gain may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Therefore, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent has exhibited a pattern of bad faith registration and use. In support of this allegation, Complainant provides evidence showing that Respondent registered three domain names related to well-known marks. However, Complainant does not refer to UDRP cases in which Respondent was found to have registered and used domain names in bad faith. Consequently, the Panel finds that Complainant has not met its burden of proof for this allegation, and will not further discuss the allegation.
Complainant also alleges that Respondent is using or plans to use the disputed domain name for phishing activity and/or other malicious activity. However, Complainant does not provide any evidence of any actual activity of that nature. Consequently, the Panel finds that Complainant has not met its burden of proof for this allegation, and will not further discuss the allegation.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving website displays unrelated pay-per-click advertisements. This can demonstrate bad faith per Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”); see also Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Further Respondent engaged in typosquatting by merely transposing the “E” and “U” in Complainant’s mark in order to form the disputed domain name. Typosquatting can further evidence bad faith per Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Thus the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <peublo-mechanical.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: April 22, 2021
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