PuroSystems, Inc. v. Paydues Inc
Claim Number: FA1210001467833
Complainant is PuroSystems, Inc. (“Complainant”), represented by William L. Montague of Montague Law PLLC, Kentucky, USA. Respondent is Paydues Inc (“Respondent”), New Mexico, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <purocleanfranchise.net>, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2012; the National Arbitration Forum received payment on October 18, 2012.
On October 19, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <purocleanfranchise.net> 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 October 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 2012 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@purocleanfranchise.net. Also on October 22, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, PuroSystems, Inc., owns United States Patent and Trademark Office (“USPTO”) registrations for the PUROCLEAN mark (Reg. No. 2,977,204 registered July 26, 2005). Complainant uses the PUROCLEAN mark in connection with the franchising of businesses providing fire and water damage restoration services, mold and mildew removal services, and biohazard cleanup services.
Respondent, Paydues Inc, registered the <purocleanfranchise.net> domain name on July 7, 2011. The disputed domain name resolves to a website that incorporates Complainant’s design mark and purports to offer information related to franchising opportunities associated with Complainant.
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 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.
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.”).
The Panel finds that Complainant has established rights in the PUROCLEAN mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The <purocleanfranchise.net> domain name is confusingly similar to the PUROCLEAN mark. The disputed domain name merely combines the PUROCLEAN mark with the generic word “franchise,” a term which is merely descriptive of Complainant’s business. The disputed domain name also includes the generic top-level domain (“gTLD”) “.net.” The addition of this gTLD is irrelevant in a confusing similarity analysis under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The additional term “franchise” fails to differentiate the disputed domain name from Complainant’s PUROCLEAN mark because Complainant’s business involves the franchising of companies under the mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The Panel finds the <purocleanfranchise.net> domain name to be confusingly similar to Complainant’s PUROCLEAN mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show 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 UDRP ¶ 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 WHOIS information identifies “Paydues Inc” as the registrant of the <purocleanfranchise.net> domain name. Complainant also claims that it has conducted searches of the USPTO trademark database, and has revealed no instances in which Respondent has registered a trademark with “Puroclean” in the mark. Complainant states that it has neither condoned nor established any business relationship with Respondent, nor has Respondent been authorized to otherwise use the PUROCLEAN mark. The Panel finds that Respondent is not commonly known by the <purocleanfranchise.net> domain name under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant alleges that the disputed domain name resolves to a website that incorporates Complainant’s design mark and purports to offer information related to franchising opportunities associated with Complainant but requires Internet users to provide identifying information that has substantial economic value as a potential lead for sellers of franchises similar to that of Complainant. The Panel finds that Respondent’s use of the disputed domain constitutes neither a bona fide offering of goods and/or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Furthermore, use of the disputed domain in furtherance of a phishing scheme shows a lack of rights or legitimate interests in the <purocleanfranchise.net> domain name. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent has engaged in a pattern of registering and using disputed domain names in bad faith, as evidenced by prior decisions by the NAF that resulted in the transfer of the disputed domain. See, e.g., PFIP, LLC v. Paydues Inc., FA 1411907 (Nat. Arb. Forum, Nov. 25, 2011); Batteries Plus, LLC v. Jason Rager / Paydues Inc., FA 1418065 (Nat. Arb. Forum, Jan. 10, 2012); Anytime Fitness, LLC v. Paydues Inc., FA 1457880 (Nat. Arb. Forum, Sept. 21, 2012). The Panel concludes that such a pattern of bad faith registrations indicates that Respondent has registered the present disputed domain name in bad faith. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Therefore, the Panel finds bad faith registration and use of the disputed domain name by Respondent under Policy ¶ 4(b)(ii).
Respondent is using the <purocleanfranchise.net> domain name to solicit information from potential franchisees in an attempt to compete with Complainant’s efforts to do the same, and Respondent’s efforts are disruptive to Complainant’s business. The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent is also using the <purocleanfranchise.net> domain name to attract Internet users to Respondent’s website by creating confusion as to the source of the disputed domain name. Respondent is generating a commercial advantage through the confusion and resulting mistakes made by Internet users. Furthermore, the <purocleanfranchise.net> domain name’s resolving website incorporates Complainant’s design mark. Previous panels have held that a respondent cannot be found to have registered in good faith when the disputed domain is likely to deceive Internet users. See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). The Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
As Respondent is using the <purocleanfranchise.net> domain name is to engage in a phishing scheme, the Panel finds a bad faith registration and use under Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <purocleanfranchise.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 11, 2012
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