B.E.S.T. GDR, LLC v. Ross Edmondson
Claim Number: FA2205001997819
Complainant is B.E.S.T. GDR, LLC (“Complainant”), represented by Renee Reuter, Missouri, USA. Respondent is Ross Edmondson (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <premiumhomeservice.info>, registered with Easyspace Limited.
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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2022; the Forum received payment on May 24, 2022.
On May 26, 2022, Easyspace Limited confirmed by e-mail to the Forum that the <premiumhomeservice.info> domain name (the Domain Name) is registered with Easyspace Limited and that Respondent is the current registrant of the names. Easyspace Limited has verified that Respondent is bound by the Easyspace Limited 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 1, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of June 21, 2022 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@premiumhomeservice.info. Also on June 1, 2022, 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 20, 2022.
On July 5, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 offers advertising and business management services. It has rights in the PREMIUM HOME SERVICE mark through its registration of the mark with the State of Wisconsin Department of Financial Institutions, and also has common law rights in the mark through its significant investment and consistent and continual use in various markets or through its online presence as early as 2020. Respondent’s <premiumhomeservice.info> Domain Name is identical or confusingly similar to Complainant’s mark because it incorporates the PREMIUM HOME SERVICE mark in its entirety, merely adding the “.info” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. He is not commonly known by the Domain Name and Complainant has not authorized or licensed him to use the PREMIUM HOME SERVICE mark. Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Respondent is using the Domain Name to attract Internet users to his website, which provides commentary and criticism of Complainant’s business, but he can achieve that objective without using a domain name which is so nearly identical to Complainant’s mark. Finally, Respondent makes use of a privacy service to conceal its identity.
Respondent registered and uses the Domain Name in bad faith. The Domain Name resolves to a website that is built to mirror Complainant’s website and this disrupts Complainant’s business. Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the PREMIUM HOME SERVICE mark and used a privacy service to conceal his true identity. Respondent can voice concerns or criticism about Complainant without using a domain name that is identical to Complainant’s mark.
B. Respondent
Complainant has no exclusive trademark rights in the PREMIUM HOME SERVICE mark because the mark consists of entirely generic terms and many other firms use this same name. Indeed, Complainant may itself have plagiarized the name of another company and copied its website.
Respondent uses the Domain Name for a consumer complaint website offering information about Complainant’s business practices. He does not compete with Complainant. His web site is not commercial in nature but is intended only to provide information about Complainant. This is a legitimate noncommercial and fair use of the Domain Name and he legitimate rights and interests in it.
Respondent registered and uses the Domain Name in good faith. He uses it to publish factual information about Complainant’s business. He has not attempted to capitalize on confusion with Complainant’s business for commercial gain or compete with or disrupt Complainant’s business. His conduct does not fit within any of the circumstances described in Policy 4(b).
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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.
The Panel finds as follows with respect to the matters at issue in this proceeding:
The PREMIUM HOME SERVICE mark was registered to Complainant with the State of Wisconsin Department of Financial Institutions (Reg. No. 20220086633 on March 16, 2022 (Complaint Exhibit A.). The Panel notes, however, that this registration is for a “DBA” (“doing business as”) registration, and there is no indication from Complaint Exhibit A that Wisconsin performs any kind of examination or review of an application for a trademark. To resolve this issue the Panel examined the website of the Wisconsin Department of Financial Institutions. According to this website, the State of Wisconsin charges only $15 for a trademark application, does not provide for any publication or comment period, and states specifically that “Rights and ownership in Wisconsin of a Trademark are gained through usage, not through the registration.” (https://www.wdfi.org/apostilles_notary_public_and_trademarks). UDRP panels have been reluctant to find rights in a mark based upon unexamined U.S. state registrations. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3. The Panel notes that while Complainant’s principal business office as stated in the Complaint is located in the State of Illinois, it did not register its PREMIUM HOME SERVICE mark in that state but chose Wisconsin instead. In light of the “dba” character of this registration and the fact that the issuing agency itself states that the registration confers no rights or ownership in a Wisconsin-registered trademark, the Panel finds that this registration does not confer upon Complainant sufficient rights in the PREMIUM HOME SERVICE mark to support bringing and maintaining a UDRP complaint.
Complainant also alleges common law rights in the PREMIUM HOME SERVICE mark, through significant marketing investment and continual use of the mark in various markets or online through its website at <premiumhomeservice.com> and mobile apps since as early as 2020. Policy ¶ 4(a)(i) does not require a complainant to own a registered mark if it can demonstrate common law rights in the mark. Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant must prove that the mark has acquired a secondary meaning, which is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor. Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA 1730673 (Forum June 1, 2017) (holding that Complainant established common law rights in her personal name since “[a] mark can generate a secondary meaning sufficient to establish Complainant’s rights when consistent and continuous use of the mark has created distinctive and significant good will….”), Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The WIPO Overview 3.0 ¶ 1.3 lists a number of factors that support a claim of common law trademark rights, including “(i) the nature and duration of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”
Apart from a screenshot of Complainant’s website submitted as Complaint Exhibit B, Complainant offered no evidence to support its claim of common law trademark rights. Exhibit B does nothing more than show that Complainant was using its mark at the time this screenshot was taken, however, and there is no evidence of continued use over a period of time or any of the other factors described above as establishing valid common law rights in a mark. Respondent submitted a WHOIS report (Respondent Exhibit 4) showing that Complainant’s domain name was created in June 2019 but there is no evidence of Complainant’s actual use of that domain name or the PREMIUM HOME SERVICE mark over any period of time. Complainant’s claim of common law rights in the mark is also rejected.
The Panel finds that Complainant has failed to demonstrate rights in the PREMIUM HOME SERVICE mark for the purposes of Policy ¶ 4(a)(i).
Rights or Legitimate Interests, Bad Faith
As complainant has failed to meet the requirements of Policy ¶ 4(a)(i), the Panel may decline to analyze the other two elements of the Policy. Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary), Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)). The Panel elects to adopt this approach and does not analyze these two elements.
Complainant having failed to establish all three elements required under the Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <premiumhomeservice.info> Domain Name REMAIN WITH Respondent.
Charles A. Kuechenmeister, Panelist
Dated: July 7, 2022
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