DECISION

 

Tiger Payment Solutions LLC v. wes madan / united oil heat, inc

Claim Number: FA1602001660350

PARTIES

Complainant is Tiger Payment Solutions LLC (“Complainant”), represented by Robert M. O’Connell, Jr. of Fish & Richardson P.C., Massachusetts, USA.  Respondent is wes madan / united oil heat, inc (“Respondent”), represented by Ryan E. Prophett of WYNN & WYNN, P.C., Massachusetts, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ordermyoil.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as panelists in this proceeding.

 

The Hon. Neil Brown QC, Jonathan Hudis and Debrett G. Lyons as panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 10, 2016; the Forum received payment on February 10, 2016.

 

On February 10, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ordermyoil.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, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2016 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@ordermyoil.com.  Also on February 11, 2016, 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 1, 2016.

 

On March 7, 2016, pursuant to Respondent’s request to have the dispute decided by a three-member panel, the Forum appointed The Hon. Neil Brown QC, Jonathan Hudis and Debrett G. Lyons (chair) as panelists.

 

Also on March 7, 2016, Complainant made an unsolicited Additional Submission which the Forum considered to comply with Supplemental Rule 7.

 

On March 11, 2016, Respondent made an unsolicited Additional Submission which the Forum considered to comply with Supplemental Rule 7.

 

Having reviewed the communication 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.

 

RELIEF SOUGHT

A.   Complainant

Complainant asserts trademark rights in ORDEROIL and alleges that the disputed domain name is confusingly similar to its trademark. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant further alleges that Respondent registered and is using the disputed domain name in bad faith.  In particular, Complainant alleges that the resolving website is used to directly compete with Complainant in the same market.  Further, it is said that Respondent’s bad faith is demonstrated since Respondent was denounced by a local industry regulatory body[1] for misleading conduct.

 

B. Respondent

Respondent argues that the disputed domain name is not confusingly similar to Complainant’s trademark because the words, “order” and “oil,” are generic terms.  Moreover, the trademark, as it has been registered, includes a graphic element that cannot be separated from the words of the mark.  

 

Respondent alleges that it has a right or legitimate interest in the disputed domain name since it has been doing business by reference to the expression “ordermyoil” since 2008 and is commonly known by that expression.

 

Respondent alleges that it could not have registered the domain name in bad faith because it was unaware of and lacked actual notice of Complainant’s rights in its trademark at the relevant time.  Further, the asserted denouncement of Respondent by the regulatory body does not reference Complainant, and so cannot show bad faith targeting of Complainant.

 

Finally, Respondent submits that Complainant has acquiesced in the knowledge of Respondent’s use of the domain name since 2009 at which time Complainant was aware of Respondent’s use of the domain and failed to object to that use until 2015.

 

C. Additional Submissions

Both parties made Additional Submissions which are largely argumentative and which have been taken into account by Panel in reaching its decision.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.    Complainant has provided information regarding sellers of heating oil by reference to the trademark ORDEROIL since 2004;

2.     Complainant owns United States Patent and Trademark Office (“USPTO”) Reg. No. 3,104,939, registered June 13, 2006, for the trademark ORDEROIL and Design;

3.    the disputed domain name was registered on June 27, 2008 and currently redirects Internet traffic to a website at www.discountheatingoilprices.com offering a competitive service; and

4.    there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.

 

DISCUSSION

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.

 

Trademark Rights / Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under the Policy that a trademark registered with a national authority is evidence of trademark rights.[2]  Complainant provides evidence of its USPTO registration for the trademark shown below:

Panel is satisfied that Complainant has trademark rights in this mark.  

 

Respondent does not dispute Complainant’s trademark ownership, but argues that the domain name is not confusingly similar to Complainant’s trademark because the words “order” and “oil” are generic terms[3] and because the registered trademark includes an abstract depiction of flames[4] which influences the overall assessment of the compared terms.

 

Were these proceedings for trademark infringement, submissions concerning the scope of the rights given by the USPTO registration would rightly entertain a court of competent jurisdiction.  However, the Policy was put in place to provide a quick and, compared to court proceedings at least, cost-effective means to combat abusive domain name registration.

 

With that, certain expediencies have evolved unique to the Policy.  So, for example, for the purposes of paragraph 4(a)(i) of the Policy, panelists have in the main ignored the graphic elements of a composite trademark registration and treated such a trademark as a word mark for the purposes of comparison with a domain name[5].

 

If that practice is applied here, the comparison resolves to the expression “ORDEROIL” on the one hand and the domain name <ordermyoil.com> on the other.  Stripped of its gTLD[6], the domain name differs only by addition of the word “my,” which has no source distinguishing value[7].

 

Nevertheless, it is Respondent’s contention that since both “ORDEROIL” and “ordermyoil” are expressions composed of ordinary English language words, parsed in a regular manner, there can be no confusion.

 

The Panel is mindful that arguments regarding generic (descriptive) use have been reserved for consideration as part of the assessment of a respondent’s claim to a legitimate interest and/or good faith registration and use[8], another example of how the Policy has developed in its own way, no doubt in an effort to avoid argument about the validity of a registered mark or double-guessing the reasons for acceptance of the trademark application for registration[9]

 

It would therefore be open to the Panel to disregard Respondent’s arguments regarding generic use for the purposes of determining whether the contested domain name is confusingly similar to Complainant’s trademark.

 

That said, an alternative approach can be taken.  Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. In the absence of a registered trademark a complainant might show common law rights in a trademark acquired through use and reputation.  In such a case, a panel will be required to make its own assessment of whether such rights exist, and is guided by resources like the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition^[10] which asks at paragraph 1.7:  What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?

 

In answer, the consensus view of UDRP panelists is that:

 

The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services.  Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.  The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark.  For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction.  However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.  Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness.  Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence.  However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.  (emphasis added)

 

Thus, even within the common conventions that have formed about the Policy, a panel will, as the need arises, not only assume the task of deciding whether the evidence proves unregistered trademark rights, but will in so doing be required to take account of the character of the alleged trademark and decide whether, by its nature, it is adapted to distinguish the complainant to the exclusion of others.

 

For the same services recited in Complainant’s USPTO registration[11], an application to register the words “ORDER OIL” (without a device or design element) would have been rejected.  The only features that distinguish the trademark and qualify it for registration are the flame device and the conjoining of the terms to form a “coined word” as the USPTO has called it.

 

The Panel therefore finds that in spite of the now incontestable status of Complainant’s Federal trademark registration, Complainant has no rights in the words “order” and “oil” apart from the way in which they appear in Complainant’s trademark as registered with the USPTO.[12]  It follows that the registration could not be enforced against use of “ordermyoil” or “order my oil”.  It further follows for the purposes of the Policy that the domain name is not confusingly similar to Complainant’s trademark.

 

This finding is dispositive of these proceedings since Complainant has failed to establish the first element of the Policy.[13]  Nevertheless, Panel finds it appropriate for the avoidance of doubt to consider the remaining elements of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[14]

 

The publicly available WHOIS information identifies “Wes Madan of United Oil Heat, Inc” as Registrant and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name.  There is no evidence that Respondent has any trademark rights in  <ordermyoil.com>.  The domain name redirects Internet users to a website where services competitive with those provided by Complainant under its trademark are promoted.

 

The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, and so the burden shifts to Respondent to establish a legitimate interest in the domain name. 

 

The submissions made in the Response rest essentially on claimed use of the domain name since August 2008.  In terms of the Policy they go towards possible proof that Respondent was either commonly – that is, publicly – known by the domain name (para. 4(c)(ii)) or that it had used the domain name or a name corresponding thereto in connection with a bona fide offering of services before it had notice of the dispute (para. 4(c)(i)).

 

The Panel observes that the wording of paragraph 4(c)(ii) is open to interpretation, but would suggest that a respondent need only be commonly known by the domain name at some point prior to the commencement of the Administrative Proceedings.  Paragraph 4(c)(i) is more specific, and the Panel observes that the trigger point is notice of the dispute, rather than notice of the Complaint.  In that regard, Respondent avers to a September 2009 telephone conversation with a Robert Fawcett, manager of Complainant, who had become aware of Respondent’s use of the domain name.  Respondent’s declaration is that no concern was expressed at that time about use of the name and that the call was made for an unrelated reason.  Whether that was the case or not, the Panel notes that, provided Respondent can show a bona fide use of the domain name from 2008, such use will predate notice of the dispute no matter how that date is calculated. 

 

Respondent relies on well marshalled evidence of its use of the contested domain name and of a corresponding name, “ordermyoil” from at least the beginning of 2009.  For example, the evidence includes January 2009 press releases made by the Massachusetts Oilheat Council, a local industry regulatory body.  Complainant relies on those press releases as being directed towards Respondent.  Although the press releases concern matters outside the scope of the Policy, the Panel observes that those documents of the Massachusetts Oilheat Council refer to “the on-line heating oil company www.ordermyoil.com”.  The Panel treats these press releases as good evidence that Respondent was publicly known by the domain name from early 2009.

 

Further, the evidence shows that by September 2009 Respondent had a substantial business network, a fact which drew Complainant’s attention and which led to the contact from Robert Fawcett at that time.

 

Further, the evidence includes proof of Respondent’s radio advertising run in January and February 2009 and newspaper and trade journal articles also published that year in connection with the phrase “ordermyoil”.

 

The Panel finds that, based on the submitted evidence, Respondent has rights or legitimate interests in the disputed domain name by reason of both of paragraphs 4(c)(i) and (ii) of the Policy.  Accordingly, Complainant has failed to establish the second element of the Policy.

 

Registration and Use in Bad Faith

Finally, under paragraph 4(a)(iii) of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it is being used in bad faith.

 

Further guidance on this requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which can be taken as evidence that the domain name was registered and is being used in bad faith, if established.

 

The four specified circumstances are:

 

‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’

 

Complainant alleges that Respondent has used the domain name in bad faith because it redirects Internet users to a website at <discountheatingoilprices.com>, which is used to promote services to oil heat consumers in the same local market in which Complainant provides its similar services.  Complainant accordingly asserts registration and use of the contested domain name in bad faith according to paragraph 4(b)(iv) of the Policy.

 

Further, and separately, Complainant alleges registration in bad faith and use in bad faith.  Use in bad faith for the reason just given; registration in bad faith because Respondent had constructive notice of Complainant’s trademark rights based on its USPTO registration.

 

The Panel finds that both of those arguments fail.  Complainant’s argument relying on paragraph 4(b)(iv) of the Policy is premised on a likelihood of confusion.  The Panel has already found that the contested domain name is not confusingly similar to Complainant’s trademark.  Accordingly, no such likelihood of confusion exists.

 

The Panel finds separately that there has been no bad faith use of the contested domain name. Respondent has shown to the Panel’s satisfaction that it has rights and legitimate interests in the domain name.[15]

 

Finally, were it necessary to decide the point, Panel does not find registration in bad faith.  First, because Panel adopts the position that there is no place for constructive notice of trademark rights under the Policy.[16]  Second, because there is no compelling evidence that Respondent was aware of Complainant or its trademark in June 2008 when Respondent registered the domain name.  Respondent has provided a sworn statement that it did not in fact know of Complainant until September 2009.[17]  Third, Complainant provides no convincing explanation as to why these Administrative Proceedings were not brought earlier if Respondent’s domain name registration was truly in bad faith.  Whilst there has been debate regarding the application of the principle of laches to the UDRP in cases of long, unexplained delay, all that need be noted here is that the passage of time makes Complainant’s claim of bad faith registration quite uncertain.

 

In short, there is no evidence that Respondent targeted Complainant’s trademark in registering the contested domain name.  Given the generic character of the words comprising Complainant’s trademark and the disputed domain name, the Panel finds there is an absence of evidence pointing in that direction.

 

Accordingly, the Panel finds that Complainant has failed to meet its burden of proof of bad faith registration and use and has therefore failed to establish the third and final element of the Policy.

 

DELAY

Respondent contends that Complainant unreasonably delayed in the assertion of its rights to the detriment of Respondent.  Given that the Complaint has failed comprehensively, Panel finds that there is no need to examine that claim.

 

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief requested in the Complaint is DENIED.

 

Accordingly, it is Ordered that the <ordermyoil.com> domain name REMAIN WITH Respondent.

 

 

Debrett G. Lyons (chair),

The Hon. Neil Brown QC,

Jonathan Hudis

 Panelists

Dated: March 23, 2016