Keane Construction, Inc. and Three Boys Enterprises, LLC v. Chris White
Claim Number: FA1606001680295
Complainant is Keane Construction, Inc. and Three Boys Enterprises, LLC ( collectively “Complainant”), represented by Zachary A.P. Oubre of McAfee & Taft A Professional Corporation, Oklahoma, USA. Respondent is Chris White (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalbarnpros.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 20, 2016; the Forum received payment on June 20, 2016.
On June 21, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nationalbarnpros.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 June 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 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@nationalbarnpros.com. Also on June 22, 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 July 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
1.Complainants are United States companies engaged in the building industry and in particular in the building of barns.
2.Complainants use the NATIONAL BARN COMPANY mark in connection with their business.
3. First Complainant has registered the NATIONAL BARN COMPANY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,394,786, registered Mar. 11, 2008), which establishes rights in the mark. See Compl., at Attached Ex. 1.
4. Second Complainant has registered the NATIONAL BARN COMPANY mark with USPTO (e.g., Reg. No. 4,925,115, registered Mar. 29, 2016), which establishes rights in the mark. See Compl., at Attached Ex. 2.
5. The NATIONAL BARN COMPANY mark is held by the Complainant concurrently.
6. Respondent registered the <nationalbarnpros.com> domain name (“the disputed domain name”) on August 20, 2013.The disputed domain name is confusingly similar to the NATIONAL BARN COMPANY mark as it incorporates the dominant portion of the mark entirely, less the spaces, and with the addition of the generic word “pros” and the top-level domain (“gTLD”) “.com.”
7. Respondent has no rights or legitimate interests in the <nationalbarnpros.com> domain name. Respondent is not commonly known by the disputed domain name nor have Complainants authorized Respondent to use the NATIONAL BARN COMPANY mark. See Compl., at Attached Exs. 6, 8. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <nationalbarnpros.com> domain name See Compl., at Attached 9,10 and 11 Rather, the domain name resolves to a website which Respondent uses to offer goods and services in direct competition with those of Complainant. See Compl., at Attached Ex.7.
8. Respondent has registered and is using the disputed domain name in bad faith. First, Respondent’s use serves as a disruption of Complainant’s legitimate business purposes. Second, Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Further, Respondent registered and is using the disputed domain name to make money from an entirely illegitimate business. See Compl., at Attached Ex. 12.
B. Respondent
Respondent failed to submit a Response in this proceeding.
In this proceeding there are two Complainants, Keane Construction, Inc. and Three Boys Enterprises, LL who seek to bring the same Complaint. They submit that they have a sufficient nexus that the one Complaint should go forward with the two named Complainants.
The Complainants will be collectively referred to as “Complainant” except where otherwise necessary for clarity.
1. Complainants are two United States companies engaged in the building industry and in particular in the building of barns and use the NATIONAL BARN COMPANY mark in connection with their business.
2. Complainants have concurrent trademark rights in the NATIONAL BARN COMPANY mark by its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,394,786, registered Mar. 11, 2008, and Reg. No. 4,925,115, registered Mar. 29, 2016), which establish their rights in the mark. Complainants have also established common law trademark rights in the NATIONAL BARN COMPANY mark from at least 1999.
3. Respondent registered the <nationalbarnpros.com> domain name on August 20, 2013.
4. The domain name resolves to Respondent’s website which is used to offer the same goods and services as Complainant.
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.”).
The first issue that arises is whether Complainants have a trademark or service mark on which they can rely. Complainants use the NATIONAL BARN COMPANY mark in connection with their business of being engaged in the building industry and in particular in the building of barns. Complainants submit
that they have registered the mark with USPTO. In that regard, the evidence is that the First Complainant has registered the NATIONAL BARN COMPANY mark with the USPTO (e.g., Reg. No. 3,394,786, registered Mar. 11, 2008), which establishes its rights in the mark. See Compl., at Attached Ex. 1. The evidence is also that the Second Complainant has also registered the NATIONAL BARN COMPANY mark with the USPTO (e.g., Reg. No. 4,925,115, registered Mar. 29, 2016), which establishes its rights in the mark. See Compl., at Attached Ex. 2. The respective registration certificates show that the registration for each Complainant covers different areas of the United States and that situation is shown on Registration 4,925,115 to be pursuant to Concurrent Use no. 94002206 and is a concurrent use with Registration No. 3, 394,786. Concurrent uses are provided for by Section 2(d) of the Lanham Act. Panels have found that a complainant’s valid USPTO registration is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has established Policy ¶ 4(a)(i) rights in the NATIONAL BARN COMPANY mark.
It should be noted that the Second Complainant’s rights date only from March 29, 2016, which is of course after the date when Respondent registered the disputed domain name, namely August 20, 2013. It has been decided many times in UDRP decisions that such a disparity does not affect the issue to be decided under this, the first element, which requires only that a complainant “has” a trademark, not whether it had one at the time the domain name was registered. It can and does, however, affect the third element, namely whether he domain name was registered and used in bad faith. It has also been decided many times that if a domain name is registered before the relevant trademark came into existence, it will be very difficult for a complainant to prove that it was registered in bad faith, as there was nothing to which any such bad faith could have been directed. It is for that reason that the Panel has looked more closely at the evidence adduced by Complainant to see if it could be that Complainant has and had trademark rights before August 20, 2013. Complainant has adduced an affidavit from Mr. Jeff Christian, the General Manager Member of the Second Complainant saying among other things that he “has personal knowledge that Keane Construction, Inc. and Three Boys Enterprizes, LLC have been jointly operating and utilizing the domain name <nationalbarn.com> to offer their services since as early as 1999.” Moreover, it is clear from the evidence of the historical documents and agreements between the Complainants that the Second Complainant has been using the name National Barn Company since 1998 and that from 1999 both companies have been using it as the name of their joint enterprise. On the basis of that evidence, the Panel also finds that both Complainants have had common law or unregistered trademark rights to NATIONAL BARN COMPANY since at least 1999, which thus predates the date on which the disputed domain name was registered.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s NATIONAL BARN COMPANY mark. Complainant argues that Respondent’s <nationalbarnpros.com> domain name is confusingly similar to the NATIONAL BARN COMPANY mark as it incorporates the dominant portion of the mark less the spaces, and the addition of the generic expression “pros” and the generic gTLD “.com” which cannot negate an otherwise confusing similarity between a domain name and a trademark. The Panel agrees with that submission; see Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Forum Aug. 12, 2015) (declaring, “Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶4(a)(i).”). Also, the addition of a generic word to a trademark to make up the domain name, such as in the present case by adding “pros” to NATIONAL BARN, does not negate confusing similarity, as is seen in many cases such as the decisions cited by Complainant, one of which is sufficient to illustrate the point; see Express Services, Inc. v. Personnel Plus a/k/a Tony Mayer, FA0205000112624 (Forum June 20, 2002) (finding the domain names <personnelexpress.com> and <expressjobs.net> confusingly similar to the trademark EXPRESS based upon, inter alia, “the mere addition of descriptive or generic words to a valid mark, however, does not eliminate the similarity between the domain name and the trademark”). The dominant portion of the trademark is of course NATIONAL BARN and most people would think of the Complainant as National Barn without using the “Company.” When Internet users see the disputed domain name they would naturally think that it is related to Complainant and was designed to invoke the concept of the professionals or professional work done by Complainant. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the NATIONAL BARN COMPANY mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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), 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take NATIONAL BARN , the dominant
portion of Complainant’s NATIONAL BARN COMPANY mark and to
use it in its domain name, adding only the generic word ”pros”;
(b) Respondent registered the disputed domain names on August 20,
2013;
(c) The domain name resolves to a website where Respondent promotes goods and services which are the same as those of Complainant and in direct competition to them; See Compl., at Attached Ex.7. Clearly, that cannot constitute a bona fide offering of goods or services and the Panel so finds. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business);
(d) Complainant submits that Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the NATIONAL BARN COMPANY mark. The Panel notes Complainant’s Exhibit 4, the WHOIS information regarding the disputed domain name, listing “Registration Private” as registrant of record. Complainant has also submitted evidence including the affidavit of Mr. Christian that the de facto owner of the National Barn Pros business is Chris White and that that is his name. The evidence also shows on the balance of probabilities that Mr. White is and has been known by many other business names other than National Barn Pros or <nationalbarnpros.com>.The Panel also notes that Respondent has failed to submit a response in this proceeding which he had the opportunity of doing and that there is no evidence to suggest that he is commonly known as National Barn Pros or <nationalbarnpros.com>. Therefore, in light of the available evidence, the Panel finds that there is no basis to find that Respondent is commonly known by the disputed domain names per Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINE mark);
(e) Complainant also submits that Respondent is not making a
legitimate noncommercial or fair use of the domain name, without
Intent for commercial gain to misleadingly divert consumers.
Complainant submits that Respondent is using the domain name with
intent for commercial gain as he is using it for business. It is apparent that the resolving website allows consumers to request a quote for the services offered, namely goods and services competing with those of Complainant which is plainly a commercial use of the domain name. Respondent is clearly trying to divert potential consumers away from Complainant for his own commercial gain and is thus using the domain name to sell directly competing services. See Compl., at Attached Ex.7.. In fact, there seems from the evidence to be a history of Respondent’s businesses “taking thousand of dollars in upfront deposits without ever finishing the work”. See Compl., at Attached Ex.12. As such, Respondent has a history of seeking commercial gain through its businesses. Accordingly, the Panel finds that on the available evidence, Respondent is not making a legitimate noncommercial or fair use of the domain name but is making an illegitimate commercial use of it.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the site which is disrupting Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) and (iv) by the promotion of competing goods and services on Respondent’s site. See Compl., at Attached Ex. 7. Panels have held this type of behavior to constitute bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See for instance the decisions cited by Complainant, Moneytree, Inc. v. somsak hnonmai, FA1212001474901 (Forum Jan. 28, 2013) (finding that Respondent’s use of the disputed domain name constitutes a bad faith disruption of complainant’s business under Policy ¶ 4(b)(iii) where “Respondent uses the confusingly similar domain name to offer services that compete with complainant in an effort to disrupt complainant’s business”); and 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)). It is clear, therefore, that the disputed domain name resolves to a website that offers nearly identical services in direct competition to those of the Complainant which shows bad faith under Policy ¶¶ 4(b)(iii) and (iv). The Panel has already found that the domain name is confusingly similar to Complainant’s trademark and when it is seen that the domain name resolves to a website promoting the same goods and services as Complainant by holding itself out as a company that builds barns, it must be that this activity has been conceived and carried out in bad faith.
It is also clear that Complainant’s trademark rights were well established before Respondent embarked on this activity by registering the domain name on August 20, 2013 and using it in the manner described.
Therefore, Panel finds that Respondent’s <nationalbarnpros.com> domain name comes squarely within the purview of Policy ¶¶ 4(b)(iii) and (iv).
Secondly, it is clear from the evidence of Respondent’s dubious conduct of other businesses that it is more likely than not that he has embarked on the present enterprise in bad faith and Complainant has made out a compelling case to that effect.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <nationalbarnpros.com> domain name using the NATIONAL BARN COMPANY mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nationalbarnpros.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 28, 2016
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