The Brickman Group Ltd. LLC v. Tucows.com Co
Claim Number: FA1201001425812
Complainant is The Brickman Group Ltd. LLC (“Complainant”), represented by Eric J. von Vorys of Shulman, Rogers, Gandal, Pordy & Ecker, P.A., Maryland, USA. Respondent is Tucows.com Co (“Respondent”), represented by Bret A. Fausett of Internet Pro APC, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brickman.com>, registered with Tucows, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 20, 2012; the National Arbitration Forum received payment on January 23, 2012.
On January 23, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <brickman.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 January 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2012 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@brickman.com. Also on January 31, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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 February 21, 2012.
On February 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: Concurrent Court Proceedings
The panel chooses to proceed with the arbitration filing. See Western Florida Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008) (deciding to proceed under the UDRP despite concurrent court proceedings because “the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation. “).
A. Complainant
1. Respondent’s <brickman.com> domain name is confusingly similar to Complainant’s mark.
2. Respondent does not have any rights or legitimate interests in the <brickman.com> domain name.
3. Respondent registered and used the <brickman.com> domain name in bad faith.
B. Respondent
1. Respondent has requested that the instant case be suspended or terminated under Rule 18(a) of UDRP policy.
2. Respondent does not provide any information as to its contentions in its Response/Request to Terminate or Suspend Proceeding.
Complainant provides commercial landscaping and snow removal services in connection with the service mark Theodore Brickman Landscaping, founded in 1939. In 1982 the name was changed to The Brickman Group, Ltd. Complainant has been providing its services in connection with the Brickman name for over 70 years.
Complainant holds two (2) trademark registrations with the United States Trademark and Patent Office (“USPTO”) as follows: THE BRICKMAN GROUP, LTD. (U.S. Reg. No. 2,653,978) first used in commerce 1982 and registered November 26, 2002; and BRICKMAN (U.S. Registration No. 3,884,828) first used in commerce 2004 and registered December 7, 2010. Both registrations appear to be in full force and effect.
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 owns trademark registrations for its famous marks mark with the United States Patent and Trademark Office (“USPTO”) These USPTO trademarks are sufficient to prove Complainant’s rights in the marks, even though Respondent is located in Canada and not the U.S. See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant alleges that Respondent’s <brickman.com> domain name is confusingly similar to Complainant’s BRICKMAN and THE BRICKMAN GROUP, LTD. marks. The only difference between the BRICKMAN mark and the <brickman.com> domain name is the attached generic top-level domain (“gTLD”), which is a non-distinguishing element of domain names, and therefore, the <brickman.com> domain name is identical to the BRICKMAN mark pursuant to Policy ¶ 4(a)(i). 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); see also Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain).
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 has satisfied this burden.
Complainant argues that Respondent is not now, and never has been, known by the name “Brickman.” Complainant contends that the WHOIS information for the disputed domain name indicates that the registrant is “Tucows.com Co,” which provides no evidence of any relationship or nominal association with the disputed domain name. Complainant also denies that it has ever authorized or licensed Respondent to use the BRICKMAN mark in any way. The evidence presented supports Complainant’s allegations that Respondent is not commonly known by the <brickman.com> domain name and therefore lacks rights and legitimate interests under 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); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant contends that Respondent’s <brickman.com> domain name hosts a website that merely provides links, presumably pay-per-click, to third-party websites that compete with Complainant, such as “Brickman Landscape,” “Lawn Care and Maintenance,” “Landscape Design,” “Landscape Enhancements,” etc. It is well-recognized that this function is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Complainant argues that Respondent’s <brickman.com> domain name resolves to a website featuring links to various competing website under titles like “Landscape Installations,” “Landscape Services,” “Landscaping Employment,” etc. Complainant asserts that as these links facilitate competition with Complainant in the landscaping industry, and therefore, Respondent’s disputed domain name and resolving website disrupt Complainant’s business. The Panel finds that Respondent thus registered and uses the <brickman.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent’s registration and use of a disputed domain name identical to Complainant’s mark was intended to take advantage of the likelihood of attraction and confusion between Complainant and Respondent. Complainant asserts that, due to the presence of the pay-per-click links on the resolving website, Respondent likely commercially gains from this attraction and confusion, which evidences bad faith registration and use according to Policy ¶ 4(b)(iv). The Panel agrees. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).
Complainant asserts that Respondent had actual knowledge of Complainant and its rights in the BRICKMAN mark prior to registering the disputed domain name because Complainant’s mark was openly and extensively used in commerce long prior to the domain name’s registration and because the content displayed on the resolving website indicates Respondent’s knowledge. 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 <brickman.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf, (Ret.), Panelist
Dated: March 8, 2012
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