Ayrshire Tree Surgeons Limited v. JOHN BAIRD / JOHN BAIRD CONTRACTORS
Claim Number: FA1503001608942
Complainant is Ayrshire Tree Surgeons Limited (“Complainant”), represented by David Flint of MacRoberts LLP, Scotland. Respondent is JOHN BAIRD / JOHN BAIRD CONTRACTORS (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ayrshiretreesurgeons.com>, registered with ENOM, INC.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 11, 2015; the Forum received payment on March 11, 2015.
On March 11, 2015, ENOM, INC. confirmed by e-mail to the Forum that the <ayrshiretreesurgeons.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 March 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 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@ayrshiretreesurgeons.com. Also on March 12, 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.
A timely Response was received and determined to be complete on March 30, 2015.
On April 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
Complainant has registered the AYRSHIRE TREE SURGEONS mark with the United Kingdom Intellectual Property Office (“UKIPO”). Complainant also asserts unregistered common law rights in the mark dating back to June 23, 2008. The mark is used on or in connection with the provision of arboricultural services in Scotland. The <ayrshiretreesurgeons.com> domain name is identical to Complainant’s mark because it differs only by the addition of the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known as the domain name or in possession of licensing rights.
Respondent has engaged in bad faith registration and use. By using the disputed domain name to offer competing services, Respondent is both disrupting Complainant business and attempting to commercially benefit from a likelihood of confusion. Further, Respondent had actual knowledge of Complainant’s rights in the AYRSHIRE TREE SURGEONS mark.
Respondent
Respondent acknowledges that he is not accredited in his business, but has been working in the industry longer than Complainant. Complainant’s argument about its advertising expenditure is irrelevant, and the disputed domain name is too generic to trademark. Ayrshire is a massive area in Scotland and full of trees, therefore there are lots of tree surgeons in Ayrshire. Additionally, Respondent’s domain name is not confusingly similar to Complainant’s mark, because Internet users should be able to tell the difference between “.com” and “.co.uk” and distinguish between the resolving websites.
Respondent is making a legitimate use of the disputed domain name as part of his business. Respondent is a tree surgeon in the Ayrshire area, and this domain name is generic enough for his business. Respondent has rights in the domain name because he purchased it through normal channels when it was available.
Respondent was not aware of Complainant or Complainant’s company when registering the disputed domain name. Respondent is not attempting to trick internet users, Respondent’s website is distinct from Complainant’s. Respondent has not targeted Complainant and did not register the disputed domain name to negatively harm Complainant or Complainant’s website.
For the reasons set forth below the Panel finds Complainant is entitled to the relief requested.
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.
Complainant has registered the AYRSHIRE TREE SURGEONS mark with the UKIPO (No. UK00003,080,559, registered July 11, 2014). The mark is used on or in connection with the provision of arboricultural services in Scotland. The Panel finds that registration with the UKIPO is sufficient to establish rights in a trademark. See Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Additionally, Complainant asserts common law rights in the AYRSHIRE TREE SURGEONS mark dating back to June 23, 2008, and claims that the mark has acquired secondary meaning. Panels have held that evidence of secondary meaning includes “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011). Complainant estimates that since 2008 it has spent a total of £10,600.27 on advertising its business in the Greenock Telegraph newspaper. Complainant has submitted details that it has placed over 150 such advertisements in the newspaper. Complainant has also submitted the following as evidence of secondary meaning: advertising under the mark in the Yell Business Directory, advertising under the mark in the BT Phonebook, and invoices from Higher Than Ltd. (a digital marketing company) showing Complainant made efforts to bolster its search engine optimization and link building. The Panel finds this evidence sufficient to establish secondary meaning, and grants Complainant common law rights pursuant to Policy ¶ 4(a)(i).
Complainant claims that the <ayrshiretreesurgeons.com> domain name is identical to its AYRSHIRE TREE SURGEONS mark. Past panels have held that a domain name which differs from the mark only by the addition of a gTLD, such as “.com,” is identical to the mark at issue. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Panels have also concluded that removing spaces between words is insufficient in distinguishing a domain name from a registered mark. See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark). Respondent’s domain name differs from the mark only by the addition of “.com” and spaces between the words. Therefore, the Panel finds that the disputed domain name is identical to Complainant’s mark.
Complainant has proven this element.
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 argues that Respondent is not commonly known as the disputed domain name or in possession of licensing rights. “John Baird” is listed as the registrant of record for the disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant concedes that Respondent is making a commercial use of the disputed domain name, but points out that it is trading under the name “John Baird Contractors.” While Complainant does not make an argument that Respondent’s use is not a bona fide offering or a legitimate noncommercial or fair use, the disputed domain name resolves to a webpage wherein Respondent is offering competing services. The Panel infers that Respondent lacks rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant has proven this element.
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent is disrupting its business by using the disputed domain name to host a website where competing services are advertised and offered for sale. The domain name resolves to a page entitled “John Baird Contractors” where professional arboricultural services are offered. Use of a confusingly similar or identical domain name to host a website offering services that compete with those under the mark at issue has constituted bad faith in the eyes of past panels. See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). The Panel finds Respondent is offering competing services under the disputed domain name, and this offer disrupts Complainant’s business, and finds this is evidence of bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent is engaging in bad faith under Policy ¶ 4(b)(iv) by attempting to commercially benefit from a likelihood of confusion. Complainant argues that Internet users who view the resolving webpage are likely to believe that the website is somehow sponsored by or affiliated with the Complainant. Complainant has provided a copy of an email it sent to Respondent which stated that Complainant received a complaint from one of its customers who viewed the resolving webpage and, at first, believed it was in fact Complainant’s website. Complainant further argues that because the website offers competing services, Respondent is commercially profiting. The disputed domain name resolves to a webpage wherein Respondent is offering arboricultural services. Past panels have found that a respondent who attempts to commercially profit by creating a likelihood of confusion between the domain name and mark at issue has engaged in bad faith under Policy ¶ 4(b)(iv). See 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). Thus, the Panel finds Respondent is attempting to profit from a likelihood of confusion, and finds this is evidence of bad faith under Policy ¶ 4(b)(iv).
Complainant claims that Respondent had actual knowledge of Complainant's rights in the AYRSHIRE TREE SURGEONS mark. Complainant argues that Respondent's offering of competing products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Respondent argues that it did not register the disputed domain name in bad faith under Policy ¶ 4(a)(iii), because it had no knowledge of Complainant and Complainant’s mark, and it did not target Complainant or register the disputed domain name to cause Complainant or Complainant’s website any harm. Past panels have not generally regarded constructive notice to be sufficient for a finding of bad faith. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). However the Panel agrees with Complainant and finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
At the time of the Disputed Domain Name’s registration, Respondent knew, or at least should have known, of the existence of the AYRSHIRE TREE SURGEONS mark and that registration of a domain name containing the well-known mark constituted bad faith per se. Complainant’s registered name, advertising, and website <ayrshiretreesurgeons.co.uk> are evidence that Respondent, in the same type of business as Complainant, knew of Complainant’s mark prior to registering the disputed domain name. See GO Local Farms, LLC v. Paul Darcy, FA 1426087 (NAF Mar. 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that Respondent knew of, and targeted, Complainant’s trade mark”).
Complainant has proven this element.
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 <ayrshiretreesurgeons.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: April 20, 2015
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