Meth Lab Cleanup, LLC v. Utah Crime Scene Cleaners
Claim Number: FA1110001412301
Complainant is Meth Lab Cleanup, LLC (“Complainant”), represented by Robert H. Thornburg of Allen, Dyer, Doppelt, Milbraith & Gilchrist, P.A., Florida, USA. Respondent is Utah Crime Scene Cleaners (“Respondent”), represented by Tyler A. Woodworth of Tyler A. Woodworth, P.C., Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <methlabcleanuputah.com> and <utahmethlabcleanup.com>, registered with GoDaddy.com, 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.
Jonas Gulliksson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 20, 2011; the National Arbitration Forum received payment on October 20, 2011.
On October 20, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <methlabcleanuputah.com> and <utahmethlabcleanup.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 October 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 2011 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@methlabcleanuputah.com and postmaster@utahmethlabcleanup.com. Also on October 20, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 November 10, 2011.
On November 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jonas Gulliksson as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant is a company offering clandestine drug lab decontamination services and a certified decontamination provider by the state of Utah. The Complainant is using the METH LAB CLEANUP LLC trademark in connection with its services. In addition to its registered trademarks the Complainant has established considerable strength and notoriety in the name METH LAB CLEANUP based upon its exclusive and continuous use since late June 2003. The Complainant owns and has used the domain name <methlabcleanup.com> since at least June 30, 2003.
The disputed domain names only differ from the Complainant’s registered METH LAB CLEANUP LLC trademarks by the addition of the geographically descriptive term “Utah”, which is not enough to mitigate at likelihood of confusion.
The Respondent has no rights or legitimate interest in the disputed domain names. The Respondent is commonly known as “Crime Scene Cleaners, LLC” or alternatively as “Utah Crime Scene Cleaners” and not by any of the disputed domain names. In November 17, 2007, the Complainant hired the Respondent as an independent contractor to service the Complainant’s customers in the Utah area, but the Complainant has never given the Respondent its permission to use the Complainant’s trademark.
The disputed domain names are not being used in connection with a bona fide offering of goods or services, or for a fair use. The Respondent is using the disputed domain names to auto-forward consumers to the Respondent’s website, on its domain <utahcrimescenecleanup.com>, where it offers crime scene cleanup services. This is likely to cause consumer confusion as well as to divert consumers from Complainant’s legitimate website.
The disputed domain names were registered and are being used in bad faith. On the day of the registration, June 5, 2008, the Respondent was highly aware of the Complainant’s trademark rights. By that time, both of the Respondent’s principals had independently attended training seminars offered by the Complainant and the Respondent had served as an independent contractor for the Complainant. Also, both the Complainant and the Respondent were registered drug lab decontamination specialists by the state of Utah. The purposes of the Respondent’s registration of the disputed domain names were primarily to disrupt the Complainant’s business and/or forward that business to Respondent’s own website.
B. Respondent
The Respondent has objected to these proceedings
on the grounds of lack of personal jurisdiction, lack of due process, insufficiency of process, insufficient service of process, failure to state a claim, lack of subject matter jurisdiction, improper venue, failure to join an indispensable party, and that no contract and no consideration exist between the two parties to support a contractual obligation to be bound by or participate in arbitration
(quotation from the Respondent’s response).
The Respondent performs decontamination services in the state of Utah. The Respondent has attended the Complainant’s classes in decontamination services, specific on how to clean up methamphetamine laboratories. The Respondent has also performed various works for the Complainant in the state of Utah. By using the Respondent to perform decontamination services in Utah, the Complainant impliedly gave consent for Respondent to use the disputed domain names. The Complainant had constructive notice that the Respondent was using the disputed domain names, which gives the Respondent the defense of laches. Complainant has not been interested in the disputed domain names since the relationship between Complainant and Respondent began in 2007 and the Complainant’s delay in asserting any interest in these domains is highly prejudicial to the Respondent. The appropriate time for the Complainant to claim the disputed domain names were at the outset of the two parties’ relationship. Since the Complainant has failed to make a timely claim, it has waived their right to do so, and the Respondent should be allowed to continue its use of the disputed domain names.
The disputed domain names are not identical or confusingly similar to the Complainant’s trademark. The use of the word Utah in the disputed domain names distinguishes these domain names from the Complainant’s name. By inserting the word Utah, the Respondent is using “meth lab cleanup” in a generic sense as a verb (providing services) rather than as a proper noun (the company of Meth Lab Cleanup). The word Utah is not used in conjunction with Complainant’s name, but rather states that Respondent legitimately provides the service to the residents of Utah.
The Complainant has failed to show that the Respondent has no rights or legitimate interest in respect of the disputed domain names. Cleaning up meth labs is commonly used as a way to describe a service provided by the Respondent. The Respondent has established a reputation in Utah providing those services which is proven by the fact that the Complainant has solicited the Respondent to provide cleaning up meth labs in Utah. When the Complainant or the Respondent is called to provide cleanup services the meth lab are no longer clandestine, but a crime scene. Therefore there is no confusion over Respondent’s name Crime Scene Cleaners and the services they provide. The Respondent is commonly known by the services it provides, which is methamphetamine cleanup.
The Respondent is using the disputed domain names in connection with a bona fide offering of services and in good faith. The Complainant has stated in its Complaint that the Respondent has taken a class from Complainant and has served as an independent contractor to service its customers in Utah. The fact that Complainant uses the word serve and service is an admission and declaration that the Respondent is using the disputed domain names in connection with a bona fide offering of services.
The disputed domain names are not being used in bad faith. The Complainant had constructive knowledge of Respondent’s business activities in Utah and the disputed domain names when they were registered. The Complainant also impliedly consented to the use of the disputed domain names by contracting the Respondent to provide meth lab cleanup services in Utah. The Respondent has not tried to divert consumers or tarnish the Complainant’s trademark or service since they qualified the disputed domain names of the services it provides by specifically using the word Utah. The disputed domain names are limited in scope to Utah and do not interfere with Complainant’s business, since the Respondent has used the disputed domain names at issue in a generic sense of the services it provides.
The Complainant has failed to meet the burden in showing all three element of the Policy and their transfer request shall therefore be denied.
The Complainant is the owner of the following United States Patent and Trademark Office (“USPTO”) trademark registrations:
- Reg. No. 3,662,398 for METH LAB CLEANUP LLC for consultation in the field of clandestine drug lab site decontamination; decontamination of illegal clandestine drug lab sites, in International Class 40 registered on August 4, 2009.
- Reg. No. 3,662,399 for METH LAB CLEANUP LLC for evaluation and testing of illegal clandestine drug lab sites for the presence of hazardous and illegal materials; evaluation and testing of real estate for the presence of hazardous material, in International Class 42, registered on August 4, 2009.
The disputed domain names were registered on June 5, 2008.
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."
The Respondent has objected to this proceeding and stated inter alia that the Panel has no jurisdiction to make a binding decision in this case. The Panel finds that the Respondent agreed to the UDRP Policy when it registered the disputed domain names. The Policy states that a domain name may be transferred if a decision of an Administrative Panel requires such action in an administrative proceeding conducted under the Policy. Therefore, this Panel finds that it may decide in this dispute.
The Respondent has raised the question of laches, stating that that the Complainant has known about but has not shown any interest in the disputed domain names, and that this gives the Respondent the rights to them. The Panel finds that the doctrine or defense of laches as such does not apply under the UDRP Policy in this case, and that the Complainant is not prevented from filing under the UDRP. See Jennifer Lopez Found. v. Tieman, D2009-0057 (WIPO Mar. 24, 2009) (“The parties are both located in the United States, where, as the Respondent observes, courts recognize the doctrine of laches (undue delay in asserting a legal claim, resulting in prejudice to the respondent). However, the Panel concludes that the equitable defense of laches does not properly apply in this Policy proceeding.).
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 Complainant has submitted evidence of its two registered METH LAB CLEANUP LLC trademarks in International Classes 40 and 42 respectively. The Panel finds that the Complainant’s ownership of the registered trademarks is sufficient to establish its rights to METH LAB CLEANUP LLC under Policy ¶ 4(a)(i). Further, the Panel finds that the prior registration date of the disputed domain names is irrelevant for the assessment of confusing similarity. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO “such evidence establishes complainant’s rights in the mark pursuant to Policy 4(a)(i)”); see also WIPO, WIPO Overview of WIPO Panels Views on Selected UDRP Questions, at ¶ 1.1 (2nd ed.) (“WIPO Overview 2.0”) (stating that the registration date of a trademark is “irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.”)
The Panel notes that both of the disputed domain names feature most of the Complainant’s mark, omitting only the spaces between the terms and the “LLC” portion of the mark. Further, the disputed domain names differ from the METH LAB CLEANUP LLC mark by the geographic identifier “utah” and the generic top-level domain “.com”. The Panel finds that “meth lab cleanup” constitutes the dominant component of both the Complainant’s trademark and the disputed domain names, and that the addition of the word “utah” is not enough to avoid confusing similarity between the trademark and the domain names. Therefore, the Panel finds that the Respondent’s omissions and additions to Complainant’s mark are not sufficient to remove the disputed domain names from the realm of confusing similarity under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy 4(a)(ii).”); see also Playboy Enters. Int’l, Inc. v. Demirtas, D2007-0768 (WIPO Aug. 23, 2007) (“. . . [T]he use of a famous mark in its entirety together with a geographic term in a domain name creates a domain name that is confusingly similar to the famous mark.”)
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark. The first element of the Policy is thus fulfilled.
Any of the following circumstances, in particular but without limitation, if found by the Panel, shall demonstrate the Respondent’s rights or legitimate interests to a domain name:
i) The 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 fact that the Respondent has been commonly known by the domain name; or
iii) A legitimate non-commercial 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.
The Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interest in the disputed domain names under Policy ¶ 4(a)(ii) and then the burden shifts to Respondent to show that it does have rights or legitimate interests. 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).
The Complainant has stated that the Respondent is using the web sites linked to the disputed domain names to auto-forward visitors of the web sites to the Respondent’s domain <utahcrimescenecleanup.com>. This has not been disputed by the Respondent. The Panel’s visits to the websites linked to the disputed domain names confirmed that the Respondent is using the disputed domain names to auto-forward visitors to <utahcrimescenecleanup.com>. The Respondent’s use of the disputed domain names to forward potential customers to a website that markets the Respondent’s services is not a bona fide offering of goods or services or a legitimate non-commercial or fair use under the Policy. See 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 Respondent has stated that it is commonly known by the services it provides, which is inter alia methamphetamine cleanup, and that the Respondent therefore is using the disputed domain names in connection with a bona fide offering of services.
Based on the Registrar’s (GoDaddy.com, Inc.) verification, the Panel finds that the Respondent is not commonly known by any of the disputed domain names, as the Respondent has registered the domain names under the name “Utah Crime Scene Cleaners”. See Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”.) Also, the Panel finds that it is clear that the Respondent was well aware of the Complainant’s trademark when registering the disputed domain names, inter alia because of the business relations between the parties. This evidences the Respondent’s lack of rights or legitimate interest in the respect of the disputed domain name. See Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct 16, 2001) (“. . . [I]t is clear that Respondent was a distributor of Complainant when the name was registered. This evidences Respondent’s lack of rights or legitimate interests in respect to the disputed domain name.”).
In light of what is stated above the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights and legitimate interest in the disputed domain name and that the Respondent has failed to show that it does have rights or legitimate interest. The second element of the Policy is thus fulfilled.
The Panel finds, inter alia by the submitted agreement, that there has been a business relationship between the parties prior to the registration of the disputed domain names. This supports a finding that the Respondents registration of the disputed domain names was in bad faith. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 9, 2001) (finding that given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to create user confusion and disrupt the complainant's business).
Further, the Panel finds that the Respondent’s use of the web sites linked to the disputed domain names to auto-forward visitors to the Respondent’s web site on the domain <utahcrimescenecleanup.com> shows that the disputed domain names are being used to intentionally attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to inter alia the source of and services on the Respondent’s web site.
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. The third element of the Policy is thus fulfilled.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <methlabcleanuputah.com> and <utahmethlabcleanup.com> domain names be TRANSFERRED from Respondent to Complainant.
Jonas Gulliksson, Panelist
Dated: November 29, 2011
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