Geordie Price Ltd. c/o Irving Graham v. William Churchill Daniel Smith
Claim Number: FA0903001251225
Complainant is Geordie
Price Ltd. c/o Irving Graham (“Complainant”),
represented by Steven L.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ukhouseclearances.com>, registered with Tucows Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 11, 2009.
On March 9, 2009, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <ukhouseclearances.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 6, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@ukhouseclearances.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ukhouseclearances.com> domain name is confusingly similar to Complainant’s UK HOUSE CLEARANCE mark.
2. Respondent does not have any rights or legitimate interests in the <ukhouseclearances.com> domain name.
3. Respondent registered and used the <ukhouseclearances.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Geordie Price Ltd. c/o Irving Graham, began doing business under the UK HOUSE CLEARANCE
mark in January 2007. Complainant
provides services and labors to real estate owners that need rubbish or items
removed from their buildings. By
December 2007, Complainant was one of the largest companies of its kind in the
Respondent registered the <ukhouseclearances.com>
domain name on October 23, 2008. The
disputed domain name resolves to a website that offers directly competing
services.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that Complainant need not register its mark
with a governmental trademark authority in order to obtain rights in the mark
under Policy ¶ 4(a)(i), so long as Complainant can
demonstrate sufficient secondary meaning in the mark to establish its common
law rights. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO
Mar. 23, 2000) (noting that the Policy “does not distinguish between registered
and unregistered trademarks and service marks in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”); see
also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat.
Arb. Forum
Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark
registration if a complainant can establish common law rights in its mark).
Complainant has
asserted common law rights in the UK HOUSE CLEARANCE mark through its
continuous use since January 2007. Complainant
has asserted its substantial advertising revenue and corporate growth since
that time through its <ukhouseclearance.com> domain name, and that it has
become one of the largest businesses of its kind in the
Respondent’s <ukhouseclearances.com> domain name incorporates Complainant’s entire UK HOUSE CLEARANCE mark while adding an “s” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that these additions do not adequately distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and
legitimate interests in the disputed domain name. The Panel finds that Complainant must set
forth a sufficient prima facie case
supporting this assertion, before Respondent receives the burden of proving its
rights or legitimate interests in the disputed domain name. The Panel finds Complainant has set forth a
sufficient prima facie case in this
instance, and now the burden of proving otherwise lies with Respondent. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under Policy ¶ 4(a)(ii) before the burden
shifts to the respondent to show that it does have rights or legitimate
interests in a domain name); see also Swedish
Match UK Ltd. v. Admin, Domain,
FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima
facie case has been established by the complainant under Policy ¶ 4(c), the
burden then shifts to the respondent to demonstrate its rights or legitimate
interests in the disputed domain name).
Complainant asserts that Respondent is not commonly known by the
disputed domain name, and that the registrant for the disputed domain name is “William
Churchill Daniel Smith.” Moreover,
Complainant argues that Respondent has no license or permission to use
Complainant’s mark in any fashion. The Panel
finds that Respondent is not commonly known by the disputed domain name under
Policy ¶ 4(c)(ii).
See IndyMac Bank F.S.B. v. Eshback,
FA 830934 (Nat. Arb. 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 of that it is commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5,
2007) (concluding that the respondent was not commonly known by the
<lilpunk.com> domain name as there was no evidence in the record showing
that the respondent was commonly known by that domain name, including the WHOIS
information as well as the complainant’s assertion that it did not authorize or
license the respondent’s use of its mark in a domain name).
Complainant alleges that Respondent is using the disputed domain name
to directly compete with Complainant by offering identical services from the
resolving website. The Panel finds that
this use fails to 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). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the
respondent’s use of the complainant’s LIFESTYLE LOUNGE 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 noncommercial or fair use pursuant to Policy ¶ 4(c)(iii));
see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK
mark to market products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services.”).
The Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s use of the disputed domain name to sell directly competing services has damaged and disrupted Complainant’s business. The Panel agrees with this argument and finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Complainant also asserts
that Respondent has engaged in such usage for commercial benefit through a
likelihood of confusion as to Complainant’s affiliation with the disputed
domain name and resolving website. The
Panel agrees and finds that Respondent has engaged in bad faith registration
and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb.
Forum May 14, 2001) (finding bad faith where the respondent used the domain
name, for commercial gain, to intentionally attract users to a direct
competitor of the complainant); see also Nokia Corp. v. Private, D2000-1271
(WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(iv) where the domain name resolved to a website
that offered similar products as those sold under the complainant’s famous
mark).
The Panel
finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ukhouseclearances.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: April 23, 2009
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