Precision Air & Plumbing, Inc. v. Ci Ci Berardi / You Go Boy Marketing
Claim Number: FA2106001951450
Complainant is Precision Air & Plumbing, Inc. (“Complainant”), represented by Albert L. Schmeiser of Schmeiser, Olsen & Watts, LLP, Arizona, USA. Respondent is Ci Ci Berardi / You Go Boy Marketing (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <precisionairconditioningaz.com> (“Domain Name”), registered with GoDaddy.com, LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 17, 2021; the Forum received payment on June 17, 2021.
On June 22, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <precisionairconditioningaz.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 June 24, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 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@precisionairconditioningaz.com. Also on June 24, 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.
On July 14, 2021, Respondent sent an email communication to the Forum, the status of which is discussed below.
On July 20, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 taking into account a response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: DEFICIENT RESPONSE
On July 14, 2021, Respondent sent an email communication to the Forum that does not specifically address the allegations against it. Thus the Forum does not consider the Response to be in compliance with ICANN Rule 5. Notwithstanding the lack of compliance the Panel, at its discretion has chosen to accept and consider this Response. See Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
A. Complainant
Complainant, Precision Air & Plumbing, Inc., is in the business of providing air conditioning contractor services, including air duct cleaning services, and installation, repair, and sale of air conditioning apparatus. Complainant maintains registration in the PRECISION and PRECISION AIR & HEATING marks through registrations with the United States Patent and Trademark Office (USPTO). The Domain Name is identical or confusingly similar to Complainant’s PRECISION mark because it incorporates the PRECISION mark while adding in the words “air” and “conditioning”, the geographic term “az”, and the “.com” generic top-level domain (“gTLD”) to form a domain name.
Respondent does not have any rights or legitimate interests in the <precisionairconditioningaz.com> domain name because Respondent is not licensed to use Complainant’s PRECISION and PRECISION AIR & HEATING marks. Respondent is not using the <precisionairconditioningaz.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent by passing off as Complainant by offering competing services.
Respondent registered and uses the <precisionairconditioningaz.com> domain name in bad faith because Respondent’s use causes confusion as to the affiliation between the <precisionairconditioningaz.com> domain name and Complainant. Respondent also uses the <precisionairconditioningaz.com> domain name to pass off as Complainant offering the same services Complainant offers.
B. Respondent
Respondent failed to submit a formal Response in this proceeding however on July 14, 2021 Respondent sent an e-mail to the Forum, the relevant portion being extracted below:
“Precision Air Conditioning Services is a licensed HVAC company, NOT a plumbing company. It is located far away from Chandler, AZ and is not even in the same area code.”
Complainant holds trademark rights for the PRECISION mark. The Domain Name is confusingly similar to Complainant’s PRECISION mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name 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.
Complainant has rights in the PRECISION mark based on registration with the USPTO (e.g. Reg. No. 5,763,010, registered on May 28, 2019 with a date of first use in commerce of July 6, 2006). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that the <precisionairconditioningaz.com> domain name is confusingly similar to Complainant’s PRECISION mark as it fully incorporates the PRECISION mark and adds the geographically descriptive term “az”, the descriptive terms “air” and “conditioning” and a gTLD. The addition of descriptive and geographic terms and a gTLD fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case and Respondent has failed to show that it does have rights or legitimate interests in the Domain Name.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the PRECISION mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Ci Ci Berardi / You Go Boy Marketing” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
Complainant asserts that Respondent’s use of the Domain Name is to pass itself off as the Complainant to benefit financially, which does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). The Domain Name resolves to a website (“Respondent’s Website”) that purports to advertise an air-conditioning business (Precision Air Conditioning Services) operating in Arizona, the same state as Complainant, under the PRECISION Mark. However the Response provides no evidence as to whether or not Precision Air Conditioning Services exists or is a legitimate, licensed HVAC business (noting that the Respondent had and has chosen not to exercise the opportunity to provide additional evidence). Furthermore, even if Precision Air Conditioning Services is a legitimate business, Respondent provides no evidence of its connection to this business, indeed on its face Respondent appears to be a marketing company. In the absence of more detailed information from Respondent the Panel cannot conclude that Respondent (as opposed to a third party entity operating a business that trades under Precision Air Conditioning Services) uses or has sought to use the Domain Name in respect of any business at all, let alone made a bona fide offering of goods and services or a legitimate non-commercial use of the Domain Name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, November 28, 2017, Respondent had actual knowledge of Complainant’s PRECISION mark. While the PRECISION mark was not registered with the USPTO at the time, it had been in use by the Complainant for 11 years at the point. Given that the Complainant is based in Arizona it is implausible that an entity located in the same state would register a domain name containing the PRECISION Mark and the words “air” and “conditioning” (and purport to use it for an air conditioning business) absent an awareness of the Complainant and its use of and reputation in the PRECISION mark. In the absence of rights or legitimate interests of its own the Panel finds that Respondent’s registration of the Domain Name in awareness of the PRECISION mark demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
In the absence of any evidence of the legitimacy of the Precision Air Conditioning Services business advertised on the Respondent’s Website the Panel finds, on the balance of probabilities, that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s PRECISION mark for commercial gain by using the confusingly similar Domain Name to resolve to a website that purport to pass itself off as Complainant (or as an entity associated with Complainant) to sell competing air conditioning services. Use of a domain name in this manner is behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also Zoetis Inc. and Zoetis Services LLC v. Paul Adams / zoetismail, FA 1729095 (Forum June 5, 2017) (holding that the respondent registered and used the <zoetismail.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <precisionairconditioningaz.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: July 21, 2021
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