Tyco Fire & Security GmbH v. AJ Shoemaker
Claim Number: FA2106001952040
Complainant is Tyco Fire & Security GmbH (“Complainant”), represented by Jason J. Mazur of c/o Arent Fox LLP, District of Columbia, USA. Respondent is AJ Shoemaker (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yorkairconditioner-repair.com>, <yorkfurnace-repair.com>, <luxaireairconditioner-repair.com>, <luxairefurnace-repair.com>, <fraser-johnstonairconditioner-repair.com>, <fraser-johnstonfurnace-repair.com>, <guardianairconditioner-repair.com>, and <guardianfurnace-repair.com> (collectively “Domain Names”), 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 22, 2021; the Forum received payment on June 22, 2021.
On June 22, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <yorkairconditioner-repair.com>, <yorkfurnace-repair.com>, <luxaireairconditioner-repair.com>, <luxairefurnace-repair.com>, <fraser-johnstonairconditioner-repair.com>, <fraser-johnstonfurnace-repair.com>, <guardianairconditioner-repair.com>, and <guardianfurnace-repair.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@yorkairconditioner-repair.com, postmaster@yorkfurnace-repair.com, postmaster@luxaireairconditioner-repair.com, postmaster@luxairefurnace-repair.com, postmaster@fraser-johnstonairconditioner-repair.com, postmaster@fraser-johnstonfurnace-repair.com, postmaster@guardianairconditioner-repair.com, postmaster@guardianfurnace-repair.com. Also on June 29, 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 July 22, 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 the benefit of any response from Respondent.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Tyco Fire & Security GmbH (and its related corporate entities) is one of the largest providers of heating, ventilation, air conditioning, and refrigeration products and services in the world. Complainant maintains registration of its YORK, LUXAIRE, FRASER-JOHNSTON, and GUARDIAN marks with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 403,923, Registered Oct 26, 1943; Reg. No. 1,993,176, Registered Aug. 13, 1996; Reg. No. 1,289,859, Registered Aug. 14, 1984; Reg. No. 1,925,301, Registered Oct. 10, 1995). The domain names <yorkairconditioner-repair.com>, <yorkfurnace-repair.com>, <luxaireairconditioner-repair.com>, <luxairefurnace-repair.com>, <fraser-johnstonairconditioner-repair.com>, <fraser-johnstonfurnace-repair.com>, <guardianairconditioner-repair.com>, and <guardianfurnace-repair.com> are identical or confusingly similar because they all incorporate one of Complainant’s YORK, LUXAIRE, FRASER-JOHNSTON, or GUARDIAN marks while adding the words “air”, “conditioner”, “furnace”, or “repair”, a hyphen and the “.com” generic top-level domain (“gTLD”).
Respondent does not have any rights or legitimate interests in the Domain Names because Respondent is not commonly known by the Domain Names nor has Respondent received authorization to use Complainant’s YORK, LUXAIRE, FRASER-JOHNSTON, or GUARDIAN marks. Respondent is not using the Domain Names in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent is using the Domain Names to resolve to a website (‘Respondent’s Website’) located at www.furnace-repaircompany.com where it advertise air conditioner or furnace repair services which directly competes with the air-conditioner and furnace maintenance and repair services Complainant offers under its registered marks.
Respondent registered and uses the Domain Names in bad faith because Respondent has engaged in a pattern of bad faith registration through the registration of the multiple domain names involved in the current proceedings. Respondent registered the Domain Names to attract internet traffic to the Respondent’s Website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its websites. Bad faith is also evidenced by Respondent’s failure to respond to a cease and desist letter from Complainant. At the time of registration, Respondent had actual knowledge of Complainant’s rights in the YORK, LUXAIRE, FRASER-JOHNSTON, and GUARDIAN marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the YORK, LUXAIRE, FRASER-JOHNSTON, and GUARDIAN marks. Each of the Domain Names is confusingly similar to one of Complainant’s YORK, LUXAIRE, FRASER-JOHNSTON, and GUARDIAN marks. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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.
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 has rights in the YORK, LUXAIRE, FRASER-JOHNSTON, and GUARDIAN marks under Policy ¶ 4(a)(i) through its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g. (e.g. Reg. No. 403,923, Registered Oct 26, 1943; Reg. No. 1,993,176, Registered Aug. 13, 1996; Reg. No. 1,289,859, Registered Aug. 14, 1984; Reg. No. 1,925,301, Registered Oct. 10, 1995)). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that each of the Domain Names is confusingly similar to one of the Complainant’s YORK, LUXAIRE, FRASER-JOHNSTON, and GUARDIAN marks as they each incorporate the entire mark while adding the generic term “air conditioner” or “furnace”, “repair”, a hyphen and the “.com” gTLD. Such changes are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i) analysis. See 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); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. 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 Names 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.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the YORK, LUXAIRE, FRASER-JOHNSTON, and GUARDIAN marks. 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 information of record lists “AJ Shoemaker” as the 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 Names in accordance with Policy ¶ 4(c)(ii).
Each of the Domain Names resolves to the Respondent’s Website at www.furnace-repaircompany.com that offers air conditioning and furnace repair services under the FURNACE REPAIR COMPANY name. These services are in direct completion with the air conditioning and furnace repair services offered by Complainant under its YORK, LUXAIRE, FRASER-JOHNSTON, and GUARDIAN marks. There is no attempt to disclaim or otherwise make clear the absence of any association or connection with Complainant. The use of a domain name to redirect Internet users to Complainant’s competitors may not be considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
In certain circumstances a domain name holder providing repair or parts services by reference to another’s trade mark may have rights and legitimate interests under the doctrine of nominative fair use. The leading decision is Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001), in which the respondent was a reseller of the complainant’s OKIDATA products. The respondent registered and used the domain name <okidataparts.com> in connection with that business. The panel in that case concluded that this use could be a bona fide offering of goods or services within the meaning of the Policy if the following conditions were satisfied:
The respondent must actually be offering the goods or services at issue,
The respondent must use the site to sell only the trademarked goods (otherwise there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods),
The site itself must accurately disclose the respondent’s relationship with the trademark owner, and
The respondent must not try to ‘corner the market’ in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
Other panels have concluded that applying the nominative fair use doctrine could also be appropriate in cases other than those involving a reseller of branded parts, provided that the respondent operated a business genuinely revolving around the trademark owner’s goods or services, see National Association for Stock Car Auto Racing, Inc. v. Racing Connection/The Racin’ Connection, Inc., D2007-1524 (WIPO January 28, 2008) and YETI Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC. FA 1675141 (Forum July 11, 2016). The Oki Data test has also been applied for registrants offering repair services, see General Motors LLC v. Flashcraft, Inc DBA Cad Company D2011-2117 (WIPO January 30, 2012).
In the present case the Respondent’s conduct does not satisfy the tests set out in Oki Data. The Respondent has registered 8 domain names corresponding to Complainant’s marks, thus seeking to corner the market in such domain names. The Respondent’s Website does not disclaim any association with the Complainant. Finally the Respondent’s Website offers a broad array of air conditioning and repair services that extend beyond the repair of air conditioning and furnace products sold by Complainant. As such, notwithstanding that Respondent does appear to offer air conditioning and repair services from the Respondent’s Website, this is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
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 Names (between February and April 2021), Respondent had actual knowledge of Complainant’s YORK, LUXAIRE, FRASER-JOHNSTON, and GUARDIAN marks. Each of the Domain Names resolves to the Respondent’s Website where the Respondent makes a direct reference to the Complainant’s business (including by linking to Complainant’s official websites). Furthermore it is improbable that an entity would register eight separate domain names that each refer to a mark that Complainant has used for over 25 (and in some cases over 130) years in the absence of any awareness of the Complainant and its rights in the YORK, LUXAIRE, FRASER-JOHNSTON, and GUARDIAN marks. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s YORK, LUXAIRE, FRASER-JOHNSTON, and GUARDIAN marks for commercial gain and to disrupt the business of a competitor by using the confusingly similar Domain Names to resolve to the Respondent’s Website which offers repair services in direct competition with Complainant. The use of a disputed domain name to mislead users and redirect them to a competing website may indicate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also 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.”). Accordingly, the Panel finds that Respondent registered and uses the Domain Names in bad faith pursuant to Policy ¶¶ 4(b)(iv).
The Panel finds Complainant has satisfied 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 <yorkairconditioner-repair.com>, <yorkfurnace-repair.com>, <luxaireairconditioner-repair.com>, <luxairefurnace-repair.com>, <fraser-johnstonairconditioner-repair.com>, <fraser-johnstonfurnace-repair.com>, <guardianairconditioner-repair.com>, and <guardianfurnace-repair.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: July 23, 2021
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