OMS Investments, Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1310001526841
Complainant is OMS Investments, Inc. (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myscottlawnservice.com>, registered with Internet.bs Corp.
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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2013; the National Arbitration Forum received payment on October 28, 2013.
On October 31, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <myscottlawnservice.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 31, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 2013 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@myscottlawnservice.com. Also on October 31, 2013, 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.
On November 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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 issues 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
Complainant makes the following contentions:
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain name on February 27, 2007.
Complainant established that it had rights in the mark contained in the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
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.”).
Complainant argues that it uses its SCOTTS LAWNSERVICE mark with its business, which sells products and services related to lawns and gardens. See Complainant’s Exhibit B. Complainant further alleges that it has rights in the SCOTTS LAWNSERVICE mark by registering the mark with the USPTO (e.g., Reg. No. 2,273,915 filed January 11, 2007; registered March 25, 2008). See Complainant’s Exhibit A. The Panel notes that it has previously been held that a complainant sufficiently establishes its rights in a mark under Policy ¶ 4(a)(i) by registering the mark 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)). It has also been held that a complainant does not need to register its mark in the respondent’s country of residence in order to sufficiently establish its rights in the mark under the Policy. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Thus, the Panel holds that Complainant’s registration with the USPTO confers rights in the mark even though Respondent appears to reside in Chile. The Panel further notes that previous panels have held that a complainant’s rights in a mark through registration of the mark with the USPTO date back to the date the trademark application was filed. Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Therefore, the Panel holds that Complainant’s registration of its SCOTTS LAWNSERVICE mark with the USPTO sufficiently establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i) that date back to the filing date of January 11, 2007.
Complainant alleges that the <myscottlawnservice.com> domain name is confusingly similar to Complainant’s SCOTTS LAWNSERVICE mark because it merely eliminates the letter “s” found in the mark. The Panel also observes that the disputed domain name eliminates the space found between words in Complainant’s mark, adds the generic top-level domain (“gTLD”) “.com,” and adds the term “my.” The Panel notes that it has previously been held that a domain name’s elimination of a space and addition of a gTLD do not create distinctiveness between the domain name and a complainant’s mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Similarly, previous panels have found that the addition of a generic word does not sufficiently distinguish a disputed domain name from the complainant’s mark. See, e.g., Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark). In the instant proceedings, the Panel holds that the domain name’s added “my” is a generic term like the added “net” in Am. Online, supra. The Panel further notes that the elimination of the letter “s” from a complainant’s mark has been found to be too minor of an alteration to sufficiently distinguish the disputed domain name from the complainant’s mark. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it). For the foregoing reasons, the Panel holds that the <myscottlawnservice.com> domain name is confusingly similar to Complainant’s SCOTTS LAWNSERVICE mark pursuant to 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known as <myscottlawnservice.com> and that Complainant has never authorized Respondent to use its SCOTTS LAWNSERVICE mark in a domain name. The Panel notes that it has previously been held a respondent is not commonly known by a disputed domain name pursuant to Policy ¶ 4(c)(ii) where there is no evidence in the record to suggest otherwise and the complainant alleges that it has not given the respondent permission to use the at-issue mark in a domain name. See, e.g., Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). In the instant proceedings, the Panel determines that the WHOIS information identifies the registrant of the <myscottlawnservice.com> domain name as “PPA Media Services / Ryan G Foo,” and that nothing in the record suggests Respondent is commonly known as <myscottlawnservice.com>. The Panel holds that the evidence in the record thus tends to show that Respondent is commonly known by the moniker “Ryan G Foo” and not as <myscottlawnservice.com>. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), because the disputed domain name resolves to a commercial search engine that displays “Related Links,” some of which redirect Internet users to competitors of Complainant. See Complainant’s Exhibit D. According to the screenshot provided by Complainant, the at-issue website displays links entitled “Scotts Lawn Care Service” and “Scotts Lawn Care” as well as links entitled “Pay Bill on Line,” “Accept Credit Card Payments,” and “Apply for a Credit Card,” among others. See id. Complainant alleges that at one point, links to Complainant’s competitors were also displayed, including “Natural Lawn of America, Independence Landscape & Lawncare, and Nuleaf.” See Complaint at 6. Previous panels have held that the use of a disputed domain name to promote a series of hyperlinks that are unrelated to the complainant’s business is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). In the instant proceedings, the Panel holds that the hyperlinks entitled “Pay Bill on Line,” “Accept Credit Card Payments,” and “Apply for a Credit Card” are unrelated to Complainant’s lawn and garden industry. Thus, the Panel holds that Respondent’s use of the disputed domain name does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant contends that Respondent’s use of the <myscottlawnservice.com> domain name to resolve to a commercial search engine is disrupting Complainant’s business by displaying links to third-party websites that directly compete with Complainant in the lawn and garden industry, and that Respondent has thus demonstrated bad faith registration and use under Policy ¶ 4(b)(iii). The Panel recalls that according to the screenshot provided by Complainant, the at-issue website displays links entitled “Scotts Lawn Care Service” and “Scotts Lawn Care” as well as links entitled “Pay Bill on Line,” “Accept Credit Card Payments,” and “Apply for a Credit Card,” among others. See Complainant’s Exhibit D. Complainant alleges that at one point, links to Complainant’s competitors were also displayed, including “Natural Lawn of America, Independence Landscape & Lawncare, and Nuleaf.” See Complaint at 6. However, Complainant does not provide evidence such as a screenshot to support this contention. The Panel notes that bad faith under Policy ¶ 4(b)(iii) is typically found where the respondent uses the disputed domain name to promote its own competing business or to promote links to third-party competitors of the complainant. 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)”); see also Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). In the instant proceedings, as the Panel does not accept Complainant’s unsupported contention that the <myscottlawnservice.com> domain name previously resolved to a website displaying links entitled “Natural Lawn of America, Independence Landscape & Lawncare, and Nuleaf,” the Panel holds that the available evidence only demonstrates that Respondent has used the disputed domain name to promote links of non-competitors, and that this does not constitute bad faith disruption pursuant to Policy ¶ 4(b)(iii).
Finally, Complainant contends that the <myscottlawnservice.com> domain name attracts Internet users to Respondent’s commercial website by intentionally creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, or endorsement of Respondent’s website, and that Respondent has thus demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv). The Panel notes that in Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007), the panel concluded that respondent had demonstrated bad faith registration and use under Policy ¶ 4(b)(iv) because Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant and the disputed domain name redirected Internet users to a website with links unrelated to the complainant. The Constellation Wines, supra , panel also presumed that the respondent was receiving a commercial benefit in the form of click-through fees in exchange for its promotion of the unrelated websites. In the instant proceedings, the Panel similarly reasons that the <myscottlawnservice.com> domain name will likely confuse Internet users as to Complainant’s sponsorship of the disputed domain name. Further, the Panel determines that the disputed domain name resolves to a commercial search engine that displays links to various unrelated companies, including online bill pay sites and credit card companies. See Complainant’s Exhibit D. The Panel thus concludes that Respondent is receiving a commercial benefit from its use of the <myscottlawnservice.com> domain name in the form of click-through fees, as the panel concluded under similar circumstances in Constellation Wines. Therefore, the Panel holds that Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myscottlawnservice.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: November 29, 2013
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