Roto-Rooter Corporation v. Michael Whitman
Claim Number: FA1504001616496
Complainant is Roto-Rooter Corporation (“Complainant”), represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio, USA. Respondent is Michael Whitman (“Respondent”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rooterrooter.com>, registered with GoDaddy.com, LLC.
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.
G. Gervaise Davis, Esq., and Richard Hill as Panelists and David P. Miranda, Esq., as chair Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2015; the Forum received payment on April 27, 2015.
On April 28, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <rooterrooter.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 April 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 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@rooterrooter.com. Also on April 30, 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 May 19, 2015.
Complainant’s additional submission was received and determined to be timely and complete on May 22, 2015.
Respondent’s additional submission was received and determined to be timely and complete on May 27, 2015.
On June 2, 2015, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed G. Gervaise Davis, Esq., and Richard Hill as Panelists and David P. Miranda, Esq., as chair 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.
A. Complainant
Complainant Roto-Rooter Corporation owns and uses the ROTO-ROOTER mark in connection with plumbing and drain cleaning services. Complainant has registered the ROTO-ROOTER mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 597,721, Registered November 2, 1954), demonstrating rights in the mark. Complainant contends Respondent’s <rooterrooter.com> domain name is confusingly similar to the ROTO-ROOTER mark as the “ROOT” portion of the domain is similar in appearance and sound to the “ROTO-” portion of the mark. Further, neither the “.com” generic top-level domain name nor the elimination of the hyphen is relevant to a Policy ¶ 4(a)(i) analysis.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not granted Respondent permission to use the ROTO-ROOTER mark in connection with any domain name registrations or any other context. Additionally, Respondent has not made any bona fide offering of goods or services through the <rooterrooter.com> domain name, or for any legitimate noncommercial or fair use. Instead, Respondent has intended to use the confusion associated with the confusingly similar domain name to draw customers to its website, which is in direct competition with Complainant’s business.
Respondent has attempted to divert Internet users toward its own website, which competes with Complainant, thereby leading them away from Complainant’s website which constitutes bad faith disruption under Policy ¶ 4(b)(iii). Next, Respondent is attempting to attract, for commercial gain, Internet users to the <rooterrooter.com> domain name by creating a likelihood of confusion with Complainant’s ROTO-ROOTER mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of the services promoted on Respondent’s website per Policy ¶ 4(b)(iv). Lastly, because Respondent has actual and/or constructive knowledge of Complainant’s ROTO-ROOTER mark when registering the <rooterrooter.com> domain name, Respondent has acted in bad faith under Policy ¶ 4(a)(iii).
B. Respondent
The <rooterrooter.com> domain name is comprised of the common term “rooter”, displayed twice, which is a generic name for a drain cleaning machine. Additionally, Complainant cannot claim any level of rights to the term in the plumbing industry as the term merely designates and classifies services performed by those in Complainant’s and Respondent’s industry. The U.S. federal trademark registry shows ~118 marks which incorporate the term “rooter” used in connection with various plumbing products and services. See Resp., at Attached Ex. C (search results from USPTO TESS database). 76 of which have been required to disclaim any exclusive right to that term in connection with plumbing products and services. Id. Further, many such references include the same alliterative qualities as does Complainant’s mark. See Resp., at p.5.
Respondent has been in business under the Rooter Rooter, LLC name for 2.5 years without any actual confusion and therefore is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Resp., at Attached Ex. E (2012 Georgia Secretary of State’s Corporate Division database demonstrating date and good standing of the Rooter Rooter, LLC business). Further, Respondent provides legitimate plumbing services which constitute a bona fide offering of services through Rooter Rooter, LLC. Respondent’s website does not use the term “ROTO” on any webpage or in any context, incorporate any of Complainant’s design elements, or suggest any affiliation with Complainant.
Respondent has not acted in bad faith. Respondent has: used generic terms in its domain name, no history or pattern of bad faith domain name registrations, not been proven to have disrupted Complainant’s business, not attempted to profit from Internet users’ confusion. Rather, Respondent has operated its business Rooter Rooter, LLC in its jurisdiction while utilizing the <rooterrooter.com> domain name in good faith, which bears the name of its legitimate business. Complainant has failed to substantiate its claims of bad faith.
C. Additional Submissions
Complainant argues that it is the repetition of the term “ROOTER”, which results in a mark that begins with the letters “RO”, includes in the first term the four letters “ROOT”(which is nearly visually identical to “ROTO”), and ends in the term “ROOTER” that results in confusing similarity.
Complainant refutes Respondent’s assertion that it is commonly known by the Rooter Rooter, LLC business name, and instead points to the WHOIS information, which identifies the registrant of record as “Michael Whitman” affiliated with “Atlantis Plumbing, Inc.” Complainant notes that Respondent does not disclose its affiliation with Atlantis Plumbing, Inc. and the associated domain <atlantisplumbing.com>, which is an ongoing operation. This association evinces that Respondent selected the <rooterrooter.com> domain name for the sole purpose of seeking to direct Internet traffic from consumers seeking Complainant.
Respondent agrees with Complainant that Mr. Whitman, founder of Rooter Rooter, LLC, also owns and operates another business. Respondent argues this is common practice to register twice-repeated generic terms in domain names in the home service provider industry. See Resp. Add. Sub., at Attached Ex. A.
Complainant has established that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights, but has failed to establish that Respondent has no rights or legitimate interests in the domain name, or that the domain name has been registered and is being used in bad faith. Therefore, the request for transfer is denied.
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 uses the ROTO-ROOTER mark in connection with plumbing and drain cleaning services. Complainant claims that it has registered the ROTO-ROOTER mark with the USPTO (e.g., Reg. No. 597,721, Registered November 2, 1954), and argues that its numerous trademark registrations represent rights in the ROTO-ROOTER mark pursuant to Policy ¶ 4(a)(i). Panels have unquestioningly agreed that valid trademark registrations with the USPTO are sufficient for a complainant to establish rights under Policy ¶ 4(a)(i). See U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”). Accordingly, Complainant has rights in the mark according to Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <rooterrooter.com> domain name is confusingly similar to the ROTO-ROOTER mark as the “ROOT” portion of the domain is similar in appearance and sound to the “ROTO-” portion of the mark. Additionally, the repetition of the term “ROOTER”, which results in a mark that begins with the letters “RO”, and includes in the first term the four letters “ROOT” (which is argued to be nearly visually identical to “ROTO”), and ends in the term “ROOTER” arguably results in confusing similarity.
Respondent explains that many of the marks that incorporate the term "rooter" disclaimed that term as being distinctive, while other marks did not so disclaim because it was understood that the term is generic. It says: "In sum, the above evidence clearly demonstrates the term ‘rooter’ is generic for plumbing services and that no one can claim any level of rights to the term in the plumbing industry. Consumers clearly understand that the term ‘rooter’ has no trademark significance and instead merely designates and classification of services, and is perceived by the public just the terms ‘plumber,’ ‘roofer,’ ‘mower,’ or ‘painter’ are perceived by the public."
As noted above, Complainant does not contest this. Complainant accepts that a "rooting" is a generic term. What Complainant argues is that the first "rooting" in the disputed domain name is typographically similar to "roto", and that that is what makes the disputed domain name confusingly similar to Complainant's mark in the sense of the Policy.
One member of the majority does not agree with this argument. The string "rooting" is not sufficiently close to the string "roto" to engender confusing similarity in the sense of the Policy.
Therefore the Panel finds, by a majority, that the disputed domain name is confusingly similar, in the sense of the Policy, to Complainant’s trademark.
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 has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent argues it has been in business under the Rooter Rooter, LLC name for 2.5 years without any actual confusion and therefore is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Resp., at Attached Ex. E (2012 Georgia Secretary of State’s Corporate Division database demonstrating date and good standing of the Rooter Rooter, LLC business). Further, Respondent contends that it provides legitimate plumbing services which constitute a bona fide offering of services through Rooter Rooter, LLC. Id. Respondent argues that its website does not: use the term “ROTO” on any webpage or in any context, incorporate any of Complainant’s design elements, or suggest any affiliation with Complainant. Respondent agrees with Complainant that Mr. Whitman, founder of Rooter Rooter, LLC, also owns and operates another business. Respondent argues this is common practice to register twice-repeated generic terms in domain names in the home service provider industry. Attachement A (e.g., plumbersplumbers.com, rooferroofer.com, lawnlawn.com, fencefence.com, etc.).
A majority of the Panel finds that Respondent has provided satisfactory evidence to substantiate its rights and legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii). See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that the respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name).
A majority of the Panel also finds that the term of the <rooterrooter.com> domain name is common and generic/descriptive, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. Respondent has therefore established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
Consequently, a majority of the Panel finds that the Respondent has rights or legitimate interests in the disputed domain name.
Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent has rights or legitimate interests in the <rooterrooter.com> domain name pursuant to Policy ¶ 4(a)(ii), thus, Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Further, a majority of the Panel finds that Respondent has not acted in bad faith. Respondent contends that it has: used a duplicated generic term in its domain name, no history or pattern of bad faith domain name registrations, not been proven to have disrupted Complainant’s business, and not attempted to profit from Internet users’ confusion. Rather, Respondent claims it has operated its business Rooter Rooter, LLC in its jurisdiction while utilizing the <rooterrooter.com> domain name in good faith, which bears the name of its legitimate business. See Schering Aktiengesellschaft v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that because “Respondent neither offered the Domain Name for sale, nor wanted it to disrupt Complainant’s business, [nor] prevent Complainant from reflecting the mark in its domain,” it did not register or use the domain name <metagen.com> in bad faith).
A majority of the Panel agrees with Respondent’s contentions that the <rooterrooter.com> domain name is comprised entirely of a common term that has many meanings apart from use in Complainant’s ROTO-ROOTER mark. Registration and use of domain name comprising such a common term is not necessarily done in bad faith. A respondent is free to register a domain name consisting of common terms and the domain name currently in dispute contains such a common term. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
Consequently, a majority of the Panel finds that Respondent did not register and use the disputed domain name in bad faith in the sense of the Policy.
Having not established all three elements required under the ICANN Policy, a majority of the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <rooterrooter.com> domain name REMAIN WITH Respondent.
__________________________________________________________________
Richard Hill as Panelists
David P. Miranda, Esq., as chair Panelist
Dated: June 25, 2015
DISSENT
With the utmost respect to my fellow panelists, I must dissent to their expressed conclusion that it has not been established by Complainant that Respondent registered and is using the domain name in question for the purpose of confusing the general public into thinking this is a website for Roto-Rooter plumbing services. There is simply no other rational conclusion when one looks at the actual facts here. The name is in fact very confusing, which is why it is being used. The fact that Roto-Rooter is a long standing trademark makes it even clearer.
Roto-Rooter is so well established in the plumbing and sewer line clean out business all over the US and in other locations that virtually any viewer of this offending domain instantly identifies it with the Roto-Rooter business activity. It is not just some guy who thought it would be fun to emphasize the word Rooter by using it twice in a row because he cleans out sewer lines clogged by roots. It is the equivalent of an electrical company using the domain name of GeneralGeneralElectric.com, hoping it would confuse the public into thinking this was just another website for General Electric which has been known world-wide for nearly a hundred years.
Now, if Respondent had argued that it was registered because he was a sports fan who “rooted” for various sports teams, and thought RooterRooter.com was a cute way of saying so, one might agree that at least this made some sense.
Nor does the mere fact that Respondent got away with this for several years, before being asked to give it up as cybersquatting activity, make this activity lawful nor can it be supported under the UDRP rules.
Even if we were to agree that there is no specific proof of bad faith adoption of the domain shown here, like a demand to be bought out for some large sum, there is simply no other reason for using it. Respondent’s argument that there are other repetitive word domain names does not establish that his use as a small plumbing business is innocent and not actionable.
However, since the majority has done such an excellent job of arguments and citations, I will not burden the reader with further comment, except to state that this Panelist would have ruled in favor of Complainant and ordered the cancellation or transfer of the domain, for the foregoing reasons.
G. Gervaise Davis, Esq.
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