EMC Global Enterprises DBA The Clean Garage v. Jason Otterness
Claim Number: FA2208002008631
Complainant is EMC Global Enterprises DBA The Clean Garage (“Complainant”), represented by Joshua Edmonds, Pennsylvania, USA. Respondent is Jason Otterness (“Respondent”), represented by Greg Natonson, Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cleangarage.com>, 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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on August 16, 2022; the Forum received payment on August 16, 2022.
On August 17, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cleangarage.com> domain name (the 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 August 18, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of September 7, 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@cleangarage.com. Also on August 18, 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 September 7, 2022.
Complainant filed an unsolicited Additional Submission dated September 8, 2022, which was considered by the Panel.
On September 14, 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 sells auto detailing supplies, primarily online. It asserts rights in the THE CLEAN GARAGE mark through its registration of that mark with the United States Patent and Trademark Office (USPTO). Respondent’s <cleangarage.com> Domain Name is identical or confusingly similar to Complainant’s THE CLEAN GARAGE mark as it fully incorporates the mark, merely omitting the word “the” and adding the “.com” 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 is not affiliated or connected with Complainant. Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use as the resolving website redirects users to Complainant’s competing website.
Respondent registered and uses the Domain Name in bad faith. Respondent attempts for commercial gain to attract Internet users to his website by creating confusion as to the source, sponsorship, endorsement or affiliation of his website, which offers competing goods and products. Additionally, Respondent offered the Domain Name for sale for an amount far in excess of his costs associated with the Domain Name.
B. Respondent
The Domain Name is not confusingly similar to Complainant’s mark, and the words “clean” and “garage” are too broad to be trademarked. The existing trademark only covers a logo.
Respondent has rights and legitimate interests in the Domain Name. It was intended to be used as a site to market and sell garage organizing equipment. It directs to an existing website where garage equipment is sold with intent of developing a Clean Garage brand focusing solely on home garage enthusiasts.
Respondent did not register the Domain Name in bad faith. He discovered it while looking for a domain name for a garage equipment store. He paid $1,500.00 for the Domain Name and it was redirected to an existing website while plans were made for a future site. It is a valuable asset. Respondent offered to sell it to Complainant when he asked to buy it but complainant rejected that offer.
C. Complainant Additional Submission
One of Complainant’s two USPTO registrations is for a logo but the other one, Reg. No. 6,151,833, is for the mark at issue in this case and is evidenced by the copy of the registration certificate filed with the Complaint. Respondent admits he paid only $1,500.00 for the Domain Name but wants to sell it to Complainant for $25,000.00.
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 the complainant 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 THE CLEAN GARAGE mark was registered to Complainant with the USPTO (Reg. No. 6,151,833) on September 15, 2020 (USPTO registration certificate submitted as Complaint Exhibit 1). Respondent contends that the Domain Name is comprised of common and generic words and, as such, is too broad to be trademarked. Neither the USPTO nor the Panelist accepts this argument. Respondent’s claim that the registration covers only a logo is refuted by the mark shown on the USPTO registration certificate, which consists of the printed words THE CLEAN GARAGE. Complainant’s registration of its mark with the USPTO establishes its rights in that mark. Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”).
Respondent’s <cleangarage.com> Domain Name is identical or confusingly similar to Complainant’s THE CLEAN GARAGE mark, as it incorporates the mark in its entirety, merely omitting the word “the” and spaces, and adding the “.com” gTLD. These changes do not distinguish the Domain Name from Complainant’s mark for purposes of Policy ¶ 4(a)(i). The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.).
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the THE CLEAN GARAGE mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) he is not commonly known by the Domain Name, (ii) he is not affiliated or connected with Complainant, and (iii) he is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use, as the resolving website redirects users to Complainant’s competing website. These allegations are addressed as follows:
The information furnished to the Forum by the registrar lists “Jason Otterness” as the registrant of the Domain Name. This name bears no resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Respondent does not claim that he has been commonly known by the Domain Name. The Panel is satisfied that the Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).
Complainant states that Respondent is not connected or affiliated with it. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. Further, it is plain from the allegations in the Complaint that Complainant has not authorized Respondent to use its mark. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complaint Exhibit 2 is a screenshot of the web site resolving from the Domain Name. It prominently features the name “Clean Garage” and purports to offer garage flooring, organization and lighting products for garage finishing projects. There appear also to be links to one or more other websites. Complainant alleges that these links redirect to a website at www.carsupplieswarehouse.com, which is operated by Respondent and sells auto detailing products that compete directly with Complainant. Respondent does not deny Complainant’s allegations about the links to its website and the Panel takes those as true. Using a confusingly similar domain name to compete with a complainant and to redirect users to the respondent’s own business, where similar goods and services are offered, is not a bona fide offering of goods and services or a legitimate noncommercial or fair use for the purposes of Policy ¶¶ 4(c)(i) or (iii). 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).”). Respondent claims that he acquired the Domain Name with the intent to develop a Clean Garage brand focusing solely on home garage enthusiasts, but he submitted no evidence of any demonstrable preparations to that end. Even had he done so his business name would have infringed upon Complainant’s mark, which would negate any claim of bona fides.
On the foregoing evidence, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use. Respondent is using the Domain Name to attract, for commercial gain, Internet users to his web sites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site. This fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)), Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Second, Respondent offered to sell the Domain Name to Complainant for $25,000.00, having paid only $1,500.00 to acquire it (email from Respondent submitted as Exhibit 1 to Complainant’s Additional Submission). The evidence fails to demonstrate, however, that this was Respondent’s primary intent when he acquired the Domain Name, which is required to bring his conduct within the circumstances described in Policy ¶ 4(b)(i). The fact that Respondent offered to sell the Domain Name at a price in excess of his documented out-of-pocket costs directly related to the Domain Name is not, in and of itself sufficient to establish bad faith registration and use of the Domain Name. It might very well evidence a bad faith use of the Domain Name but if there is no evidence of the requisite intent at the time of registration or acquisition, the Panel is hard pressed to find that the requirements of Policy ¶ 4(a)(iii) are met by this evidence.
Nevertheless, based upon the evidence of Respondent’s registration and use of the Domain Name first above discussed, the Panel finds that Respondent registered and is using the Domain Name in bad faith.
Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cleangarage.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
September 16, 2022
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