Wes Madan / United Oil Heat, Inc., d/b/a OrderMyOil.com v. William Lajoie
Claim Number: FA1611001702295
Complainant is Wes Madan / United Oil Heat, Inc., d/b/a OrderMyOil.com (“Complainant”), represented by Ryan E. Prophett of Prophett Law Office, LLC, Massachusetts, United States. Respondent is William Lajoie (“Respondent”), New Hampshire, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ordermyoilservice.com>, registered with Deluxe Small Business Sales, Inc. d/b/a Aplus.net.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 10, 2016; the Forum received payment on November 10, 2016.
On November 10, 2016, Deluxe Small Business Sales, Inc. d/b/a Aplus.net confirmed by e-mail to the Forum that the <ordermyoilservice.com> domain name is registered with Deluxe Small Business Sales, Inc. d/b/a Aplus.net and that Respondent is the current registrant of the name. Deluxe Small Business Sales, Inc. d/b/a Aplus.net has verified that Respondent is bound by the Deluxe Small Business Sales, Inc. d/b/a Aplus.net 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 November 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@ordermyoilservice.com. Also on November 14, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 13, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 is a registered Massachusetts corporation and is in the business of delivering home heating oil, and previously offered service and maintenance of home heating oil systems. Complainant owns common law rights in the ORDERMYOIL mark based on its registration of the OrderMyOil.com website in August 2008, its extensive advertising, and its substantial expenditure of monetary resources on marketing. The <ordermyoilservice.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the term “service.”
Respondent does not have any rights or legitimate interests in the domain name. Respondent is not known as or referred to as “OrderMyOil,” and Respondent has not been authorized by Complainant to use the ORDERMYOIL mark. Further, Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to provide competing services and, in so doing, pass itself off as Complainant. In 2014, Respondent’s company, Efficient Energy Systems, Inc., was added to Complainant’s website as a burner service provider for the Needham, Massachusetts area. Less than one year after Respondent was added to Complainant’s website as a service provider, Respondent created its website using Complainant’s mark to create an impression that it was associated with Complainant.
Respondent registered and is using the domain name in bad faith. First, Respondent’s website offers the exact same service as Complainant does under the ORDERMYOIL mark. Second, Respondent uses the domain name to pass itself off as Complainant. Finally, because Respondent registered the disputed domain name one year after it was added to Complainant’s list of service providers, it is clear that Respondent registered the domain name with actual knowledge of Complainant’s mark and rights therein.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Wes Madan/United Oil Heat, Inc., d/b/a OrderMyOil.com, a registered Massachusetts corporation in the business of delivering home heating oil and related goods and services pertaining to home heating oil systems. Complainant owns common law rights in the ORDERMYOIL mark based on its registration of the OrderMyOil.com website in August 2008, and its continuous extensive advertising, and substantial expenditures on marketing since that time.
Respondent is William Lajoie of , Derry, NH, USA. Respondent’s registrar’s address is listed as Fort Lauderdale, FL, USA. The Panel notes that the domain name was registered on or about March 7, 2015.
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(f), 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 (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 is a registered Massachusetts corporation and is in the business of delivering home heating oil, and previously offered service and maintenance of home heating oil systems. Complainant argues that it owns common law rights in the ORDERMYOIL mark based on its registration of the OrderMyOil.com website in August 2008, its extensive advertising, and its substantial expenditure of monetary resources on marketing. Complainant has provided evidence in support of its advertising and marketing claims. According to Complainant, its website, OrderMyOil.com, now has over twenty thousand registered users, has sold over fifteen million gallons of home heating fuel, and has done approximately $40,000,000.00 in revenue. A complainant’s claim of common law rights in a mark is permitted when the complainant can show a secondary meaning in the mark based on use. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (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). Past panels have held that continued use of a mark and advertising done to promote a mark can establish a complainant’s common law rights. See Surecom Corp. NV v. Rossi, FA 1352722 (Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999); see also AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (finding that the manner and amount of advertising done to promote a mark may suggest secondary meaning). The Panel here finds that Complainant has provided sufficient evidence to support its claim that it has established secondary meaning in the ORDERMYOIL mark, and that Complainant has common law rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the <ordermyoilservice.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the term “service.” The Panel notes that the domain name also includes the “.com” generic top-level domain (“gTLD”). Prior panels have decided that neither the addition of a generic or descriptive term nor the affixation of the “.com” gTLD serves to adequately distinguish a respondent’s domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel here finds that Respondent’s domain name is confusingly similar to Complainant’s mark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Complainant has proven this element.
The Panel recognizes that 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), 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). Complainant has met this burden.
Complainant alleges that Respondent does not have any rights or legitimate interests in the domain name. According to Complainant, Respondent is not known by, or referred to as, “OrderMyOil,” and Respondent has not been authorized by Complainant to use the ORDERMYOIL mark. The Panel notes that the WHOIS information lists “William Lajoie” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. Based on the WHOIS data and lack of contrary evidence, the Panel here finds no basis in the available record to conclude that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant claims that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant maintains that Respondent uses the domain name to provide competing services and, in so doing, pass itself off as Complainant. According to Complainant, in 2014, Respondent’s company, Efficient Energy Systems, Inc., was added to Complainant’s website as a burner service provider for the Needham, Massachusetts area. Complainant argues that less than one year after Respondent was added to Complainant’s website as a service provider, Respondent created its website using Complainant’s mark to create an impression that it was associated with Complainant. Previous panels have decided that neither a respondent’s use of a domain name to provide services that are directly competitive with a complainant’s business nor a respondent’s use of a domain name to pass itself off as a complainant constitutes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (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).”); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant argues that Respondent’s website offers the exact same service as Complainant does under its ORDERMYOIL mark. Past panels have held that a respondent’s use of a domain name to offer competing services is evidence of bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (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 Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market). The Panel here finds that Respondent’s use of the domain name constitutes bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant contends that because Respondent registered the disputed domain name one year after it was added to Complainant’s list of service providers, it is clear that Respondent registered the domain name with actual knowledge of Complainant’s mark and rights therein. Prior panels have decided that a respondent demonstrated bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel here finds that Complainant’s contention is sufficient to support a finding of actual knowledge, leading to the conclusion that Respondent engaged in bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Complainant has proven this element.
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <ordermyoilservice.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 27, 2016
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