Foundation Systems of Michigan, Inc. v. Patrick McHale / McHale Construction
Claim Number: FA1502001604289
Complainant is Foundation Systems of Michigan, Inc. (“Complainant”), represented by Brian B. Brown of Carlson, Gaskey & Olds P.C., Michigan, United States. Respondent is Patrick McHale / McHale Construction (“Respondent”), Michigan, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <drymi.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 10, 2015; the Forum received payment on February 10, 2015.
On February 10, 2015, GODADDY.COM, LLC confirmed by e-mail to the Forum that the <drymi.com> 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 February 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2015 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@drymi.com. Also on February 11, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 contends as follows:
Complainant uses the DRY MICH mark in connection with Complainant’s offering of goods and services related to foundation repair, basement waterproofing; crawl space encapsulation and structural repair; insulation; sagging floor/beam repair; sump pumps; dehumidification and air purification; basement finishing; mold problems; and concrete lifting and leveling.
Complainant has used the DRY MICH mark since its business was founded in December 2007. Complainant registered its <drymich.com> website on December 10, 2007.
Since the inception of its business, Complainant has gained notoriety and success. Complainant asserts its common law trademark rights in the DRY MICH mark through its extensive and continuous use. Complainant has gained secondary meaning in the mark as seen through the extensive advertising and expenditures surrounding the DRY MICH mark.
The <drymi.com> domain name is confusingly similar to the DRY MICH mark because it incorporates the mark in its entirety, but negating the “ch” and adding the generic top-level domain “.com” to the mark. Such alterations are not sufficient to distinguish the disputed domain name from the DRY MICH mark. Additionally, the likelihood of confusion is greater because Complainant and Respondent operate in the same industry as competitors.
Respondent has no rights or legitimate interests in the <drymi.com> domain name. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Nothing in the record shows that Respondent is commonly known by the <drymi.com> domain name. Additionally, the disputed domain name resolves to a page where Respondent purports to offer goods and services in the same industry as Complainant.
Respondent is using the disputed domain name in bad faith. Respondent has used the <drymi.com> domain name to disrupt Complainant’s business. Respondent has used the disputed domain name to attract Internet users for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has common law rights in the DRY MICH mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademark.
Respondent uses the at-issue domain name to address a website relating to Respondent’s competing business.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
It is well settled that a Complainant need not have registered its trademark to proceed under the Policy. See 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). Here, Complainant presents sufficient evidence in its unopposed papers to show that Complainant’s DRY MICH mark has acquired secondary meaning and thus Complainant has common law trademark rights therein. Therefore, the Panel finds that Complainant has rights in a mark for the purposes of Policy ¶4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and on-going and secondary meaning was established).
In forming the at-issue domain name Respondent deletes the space between the terms in Complainant’s trademark as well as its last two letters then appends the top level domain name “.com” to the resulting string. Despite the ensuing differences between the domain name and Complainant’s trademark such alterations nevertheless leave Respondent’s <drymi.com> domain name confusing similarity to Complainant’s DRY MICH mark under Policy ¶ 4(a)(i). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (concluding that the <classicmetalroofing.com> domain name was confusingly similar to the complainant’s CLASSIC METAL ROOFS mark because changing the final term of the mark from “roofs” to “roofing” was a minor alteration and did not sufficiently distinguish the domain name from the mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
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.
As Complainant’s notes in its papers, Respondent’s use of the at-issue domain name to address Respondent’s competing website is neither a bona fide offering of goods or services pursuant to Policy ¶4(C)(i), nor a legitimate non-commercial or fair use of the domain name under Policy ¶4(C)(iii). 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.”)
Furthermore, WHOIS information for the <drymi.com> domain name lists “Patrick McHale” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <drymi.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent intends by using the confusingly similar domain name to address its website that Internet users looking for services relating to Complainant’s DRY MICH trademark will inadvertently arrive at Respondent’s competing website. Using the domain name in this manner demonstrates Respondent’s bad faith pursuant to both Policy ¶4(b)(iii) and Policy ¶4(b)(iv). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also, MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Additionally, Respondent registered the <drymi.com> domain name knowing that Complainant had trademark rights in the DRY MICH mark. Respondent admitted such knowledge to Complainant and Respondent’s commercial use of the domain name corroborates the admission. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <drymi.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <drymi.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 15, 2015
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