Trane International Inc. v. Bethany Air
Claim Number: FA2110001967459
Complainant is Trane International Inc. (“Complainant”), represented by Carlynn Beth Ferguson of IpHorgan Ltd, Illinois, USA. Respondent is Bethany Air (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tranecontractor.us>, 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.
Gerald M. Levine as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 4, 2021; the Forum received payment on October 4, 2021.
On October 5, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tranecontractor.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 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@tranecontractor.us. Also on October 6, 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.
A timely Response was received and determined to be complete on October 7, 2021.
On October 12, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Gerald M. Levine 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.
A. Complainant
Complainant, Trane International Inc., offers heating, ventilation and air conditioning (“HVAC”) products and services worldwide to industrial, commercial, and residential customers. Complainant has rights in the TRANE mark based on registrations with the United States Patent and Trademark Office (“USPTO”). Respondent’s <tranecontractor.us> domain name is identical and/or confusingly similar to Complainant’s TRANE mark.
Respondent lacks rights and legitimate interests in the <tranecontractor.us> domain name as it is not commonly known by the domain name and Complainant has not licensed, authorized, or permitted Respondent to use the TRANE mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent uses the domain names to redirect Internet users to Respondent’s commercial website at “www.bethanyair.com”. Also, Respondent’s website uses, without authorization, the TRANE logo, thereby falsely implying that Respondent is affiliated with or endorsed by Complainant as one of its contractors.
Respondent registered the <tranecontractor.us> domain name in bad faith with actual knowledge of Complainant’s rights in the TRANE mark based on the fame of the mark, Respondent’s willful redirection of the domain name to Respondent’s website, and Respondent’s use of the TRANE logo on the website. Respondent is using the domain names in bad faith for marketing purposes and to redirect Internet users to Respondent’s website which offers for sale HVAC products of Complainant’s competitors.
Complainant brings to the Panel’s attention an earlier UDRP proceeding it initiated against Respondent, Trane International Inc. v. bethany air, FA2108001959169 (Forum September 14, 2021) involving three other domain names incorporating the TRANE trademark which resulted in an award transferring <tranecontractor.com>, <trane contractor.info> and <tranecontractor.net> to Complainant’s account. As evidence in that earlier dispute, and repeated in this, was a cease-and-desist letter dated July 20, 2021 specifically referencing the <tranecontractor.com> domain name. In response to the cease-and-desist letter Respondent demanded $20,000 for <tranecontrator.com> which Respondent confirmed in a follow up email dated July 23, 2021. Complainant further alleges that Respondent has engaged in a pattern of bad faith registration of a domain name incorporating another HVAC producer’s mark with also adding, as it has in this matter, the word “contractor.”
B. Respondent
Respondent submitted an informal Response which in substance states that it purchased <tranecontractor.us> 10 years ago along with <tranecontractor.com> and “have been using these domains because we are a Trane contractor.” Respondent concludes with the statement that he is “not using Trane.com, using the domain Tranecontractor.us is no different than using an example of Tranecontractor- workshard.us and Trane doesn’t have an issue with this.”
1. Respondent’s assertion that it is a Trane contractor implies a legal relationship with Complainant which Complainant denies.
2. The evidence submitted demonstrates that Respondent is not a Trane contractor but a contractor who services heating and air conditioning equipment and using products from a number of manufacturers including Complainant.
3. Respondent registered <tranecontractor.us> for marketing its services which resolves to its own website <bethanyair.com>.
4. Respondent lacks rights or legitimate interests in <tranecontractor.us>.
5. Respondent registered in bad faith and is using <tranecontractor.us> in bad faith.
Paragraph 15(a) of the Rules of the usDRP provides that a “Panel “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the usDRP 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) Your domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) You have no rights or legitimate interests in respect of the domain name; and
(3) Your domain name has been registered or is being used in bad faith.
In the administrative proceeding, the Complainant must prove that each of these three elements is present.
This dispute arises under the usTLD Dispute Resolution Policy (“usDRP”). Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usDRP, the Panel will draw upon UDRP precedent as applicable in rendering its decision. One distinction in particular should be noted between the UDRP and the usDRP, namely that liability for cybersquatting is disjunctive—that is ,it is based on either registration in bad faith or use in bad faith.
Complainant has shown that it has rights in the TRANE mark based on numerous registrations with the USPTO (e.g., Reg. No. 623,871, registered March 27, 1956). The Panel finds Respondent’s <tranecontractor.us> domain name to be confusingly similar to Complainant’s TRANE mark because they merely add the generic term “contractor” to that mark which implies a contractual relation with Complainant which Complainant denies. The issue of relationship arises in the second and third limbs of the Policy and will be discussed below in those sections. The generic top-level domain, here the country code “.us” is merely a functional necessity and can be disregarded.
Accordingly, Complainant has succeeded on Paragraph 4(a)(i) of the usDRP
The <tranecontractor.us> domain name was registered on November 9, 2010, many years after Complainant’s TRANE mark was first used in commerce. The domain name resolves to Respondent’s commercial website at “www.bethanyair.com”, which displays Complainant’s TRANE logo. In connection with its servicing business, Respondent offers for sale Complainant’s HVAC products as well of products of other companies that compete directly with Complainant.
Complainant contends that Respondent has no rights or legitimate interests in the challenged domain name and offers substantial proof in support of its prima facie case. It neither authorized the use of its trademark nor does it have any contractual relation with Respondent that would support a legitimate interest in the subject domain name.
Complainant points out that the WhoIs record provides no evidence that Respondent is commonly known by Complainant’s mark and that this prima facie demonstrates lack of rights or legitimate interests. It cites JA Apparel Corp. v. Katz, FA1608001689449 (Forum September 25, 2016) and UBS AG v. Key, FA1611001705029 (Forum January 10, 2017) to support consensus on this issue.
The Panel accepts Complainant’s contention of satisfying its prima facie burden as it is amply supported by the evidence. Accordingly, the burden shifts to Respondent to produce evidence demonstrating that it does have rights or legitimate interests.
Paragraph 4(c) of the usDRP sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain names for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) You are the owner or beneficiary of a trade or service mark that is identical to the domain name;
(ii) Before any notice to Respondent of the dispute, your use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(iii) You (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
(iv) You are making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In its informal response, Respondent states that it is a Trane contractor. It displays Complainant’s logo on its <bethanyair.com> website (as it does the logos of other HVAC provider companies in competition with Complainant. At a stretch, this can be read to assert a Paragraph 4(c)(i) defense. However, Complainant denies any relationship and Respondent offers no evidence that any exists. Indeed, the website to which <tranecontractor.us> resolves does not support Respondent’s claim but undermines it.
On its website at <bethanyair.com> Respondent introduces itself as a contractor “operat[ing] [a] full service residential, business and commercial heating and air conditioning [service].” It states that it “uses the following manufacturers of heating and air conditioning products” of which Trane is one of seven other such manufacturers. There is no evidence from reading the statements on the website that Respondent has a contractual relation with any one of the manufacturers and in the case of Complainant it is expressly denied.
The use of <tranecontractor.us> pointing to <bethanyair.com> for marketing purposes “impl[ies] that Respondent is affiliated with or endorsed by Complainant, when there is no affiliation. Complainant contends that such use of Complainant’s TRANE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate [use under any of the other defense circumstances].”
Complainant contends that such use of <tranecontractor.us> for marketing purposes constitutes bad faith. Recreational Equipment, Inc. v. Yuan, FA2107001954773 (Forum August 9, 2021) and 7-Eleven, Inc. v. Md Nazrul Islam/Air Frist Int., FA1206001953097 (Forum July 26, 2021) (hosting a website that offers competing goods).
Of course, whether authorized or unauthorized, a respondent may be found to have a nominative right and thus a legitimate interest in incorporating a trademark under certain conditions set forth in Oki Data Americas Inc. v. ASC, Inc, D2001-0903 (WIPO November 6, 2001). In this case, however, none of the conditions enumerated in Oki Data support a legitimate interest for this Respondent. This conclusion would be different, of course, if the parties were in a contractual relation which officially recognized Respondent as a TRANE recognized servicer.
Accordingly, for these reasons Complainant succeeds on Paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that Respondent has registered or acquired the domain names primarily for the purpose of selling, renting or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain names; or
(ii) Respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain names, provided that Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
In Respondent’s answer to the cease-and-desist letter it offered to sell <tranecontractor.com> to Complainant for $20,000. Since the cease-and-desist did not reference <tranecontractor.us> and Respondent did not offer to sell it to Complainant, therefore it cannot itself be offered as a basis for a finding of bad faith registration, but it is nevertheless insightful of Respondent’s purpose for registering it. This purpose, which is not disguised, is supplemented by other evidence that Respondent has registered domains names incorporating other well-known trademarks in the HVAC business. Complainant gives as an example <goodmancontractor.com> which similarly resolves to <bethanyair.com>. Goodman is also a provider of goods and services in the HVAC industry. The Panel confirmed this contention by clicking on the URL and seeing that it resolved to Respondent’s website. This conduct of incorporating well-known and famous marks to attract “for commercial gain” Internet users to its website is a quintessential violation of the usDRP (as it is of the UDRP) by “creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.”
Nevertheless, Respondent contends that its registration of <tranecontractor.us> as well as the other domain names already lost to Complainant in the earlier UDRP case were registered and were being used in good faith. As already mentioned, it would be totally different if Respondent really had a contractual relation with Complainant. As this is not the case here, and finding that the sole purpose in registering and using <tranecontractor.us> as a marketing ploy to attract Internet users to its website, the conclusion must be that Respondent registered and is using <tranecontractor.us> in bad faith.
As I also mentioned above, this is not a case in which Respondent denies actual knowledge of Complainant. Indeed the opposite is true. It seeks to identify itself with Complainant by proclaiming itself a “Trane Contractor.” Impermissibly registering and using a disputed domain name with actual knowledge of a complainant’s mark is sufficient to show bad faith registration and use under the usDRP Paragraph 4(a)(iii), Huntsman Corp. v. VistaPrint Tech, Ltd., FA1610001700564 (Forum December 1, 2016); USPS v. Wiggin, FA1612001708540 (Forum January 30 2017).
Although it is sufficient under usDRP to find either registration in bad faith or use of the subject domain name in bad faith, here the Panel finds that Respondent both registered and is using <tranecontractor.us> in bad faith. As a general proposition, where a respondent’s primary purpose for incorporating a well-known or famous mark in a domain name is no more than a marketing ploy to attract consumers to its own website, it directly violates Paragraph 4(b)(iv) of the usDRP.
One further comment should be made in view of Respondent’s misapprehension that Trane will be “allowed to take these domains due to the strength in the size of their company” and pleads that the domain names “are not in any way infringing on the name trane.com.” The bad faith found sufficient to support cybersquatting is based solely on the facts and the law. The violation here concerns the appropriation of a trademark, not an infringement on Complainant’s domain name.
Accordingly, the Panel finds that Complainant has succeeded in establishing Paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tranecontractor.us> domain name be TRANSFERRED from Respondent to Complainant.
Gerald M. Levine, Panelist
Dated: October 18, 2021
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