Buff Exteriors, LLC v. gregg buffington
Claim Number: FA1608001691787
Complainant is Buff Exteriors, LLC (“Complainant”), represented by Daniel T. Batten of Klar Izsak & Stenger, LLC, Missouri, United States. Respondent is gregg buffington (“Respondent”), Missouri, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <buffexteriorsinc.com>, <buffexteriorsllc.com>, <buffroofing.com>, and <buffxteriors.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 30, 2016; the Forum received payment on August 30, 2016.
On August 31, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <buffexteriorsinc.com>, <buffexteriorsllc.com>, <buffroofing.com>, and <buffxteriors.com> domain names are 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 September 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 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@buffexteriorsinc.com, postmaster@buffexteriorsllc.com, postmaster@buffroofing.com, postmaster@buffxteriors.com. Also on September 6, 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 October 3, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Buff Exteriors LLC, started establishing its business under the trademark and tradename BUFF EXTERIORS (the “Trademark”) in or about June 2014, when it registered with the Missouri Secretary of State. Complainant has been extensively using the Trademark in U.S. commerce, specifically in the St. Louis, Missouri metropolitan area, in connection with providing roofing, siding and gutter services since June 2014. Since June 2014, Complainant has also operated a website under the domain <buffexteriors.com> where it offers its services under the Trademark. Complainant has spent considerable sums on promotion of its distinctive BUFF EXTERIORS trademark and is recognized by its customers and in the industry for its services under the Trademark. In light of the above, Complainant is the owner of common law trademark rights in the BUFF EXTERIORS name.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] The Subject Domain Names are Identical or Confusingly Similar to a Service Mark in which the Complainant has rights. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
1. Complainant has Rights in the BUFF EXTERIORS Mark and Derivations thereof.
Buff Exteriors LLC (“Complainant”) was founded by Laura Buffington, who started establishing the business under the BUFF EXTERIORS trademark in June 2014. Since June 2014, Complainant has spent considerable sums on the promotion of its distinctive BUFF EXTERIORS trademark. Between June 2014 and August 2016, Complainant has spent approximately $53,748.00 on advertising and promoting Complainant’s services, namely roofing repair and replacement, siding repair and replacement, gutter repair and replacement, and similar services, under the Trademark. Complainant advertises its services through its website, direct marketing, Facebook, Internet search engine optimization services, lead generation services. Complainant advertises its services through its website, direct marketing, Facebook, Internet search engine optimization services, lead generation services. Between June 2014 and present, Complainant has continuously used the trademark BUFF EXTERIORS as its primary trademark to identify its services.
On May 5, 2014, and in connection with promoting its business, Complainant registered the domain name BuffExteriors.com (the “Domain Name”) through its web hosting provider, Battle Media Group. Since June 2014, Complainant has used the Domain Name to host its website through which it promotes its services.
Through extensive, exclusive use of the Trademark, Complainant has built up considerable good will around the Trademark, thereby establishing secondary meaning in the Trademark. Therefore, Complainant is the owner of common law rights in the distinctive trademark BUFF EXTERIORS in connection with providing roofing, siding and gutter services since at least as early as June 2014.
In light of the foregoing, Complainant has clearly established common law rights into the distinctive BUFF EXTERIORS trademark through continuous and extensive use in commerce.
2. The Challenged Domain Names are Identical and/or Nearly Identical o Complainant’s Common Law Rights in the BUFF EXTERIORS Trademark
Respondent’s disputed domain names are identical and/or nearly identical to Complainant’s Trademark:
(1) <BuffExteriorsInc.com>
(2) <BuffExteriorsLLC.com>
(3) <BuffRoofing.com>
(4) <BuffXteriors.com>
(“The Challenged Domain Names”)
The only distinctions between the Trademark and the Challenged Domain Names #1 and #2 is the inclusion of the descriptive terms “Inc.” and “LLC.” The Board has recognized that such descriptive terms are not sufficient to distinguish a domain name from and trademark owners’ trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (FORUM Jan. 21, 2016) (determining that confusing similarity exist where a disputed domain name contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.)
Similarly, Challenged Domain Name #3 replaces the term “Exteriors” with “Roofing.” The term “roofing” is descriptive of Complainant’s services and so bear no weight in determining whether the Challenged Domain Names violate ICANN.
Lastly, Challenged Domain Name #4 merely misspells Complainant’s Trademark by dropping the “E” in “Exteriors.” Panels have held that neither the addition of a letter to a trademark to form a domain name nor the removal of a letter from the trademark to form the domain name serves to differentiate a respondent’s domain name adequately from a complainant’s mark. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”).
For each of the Challenged Domain Names, relevant consumers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant’s Mark and Respondent. It is without question that the Challenged Domain Names are identical and/or nearly identical to Complainant’s Trademark.
[b.] The Respondent has No Rights or Legitimate Interest in the Subject Domain Name. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the disputed domains. None of these circumstances apply to Respondent in the present dispute.
First, Respondent is not commonly known by the disputed terms incorporated in the Challenged Domain Names and so his actions do not fall within Policy ¶4(c)(ii). Respondent is not commonly known as “Buff Exteriors” or “Buff Roofing.” The WhoIs record for the Contested Domain Names reflects that Respondent’s name is Gregg Buffington. Since Respondent is not commonly known by the terms reflected in the Challenged Domain Names, he has no legitimate rights or interest in them. See Gallup, Inc. v. Amish Country Store, FA 96209 (Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name where that respondent is not known by the mark in issue); Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (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); 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). As such, ¶4(c)(ii) does not apply.
Furthermore, Respondent’s use of the Challenged Domain Names does not reflect or support a bona fide offering of goods or services under Policy¶4(c)(i), nor does Respondent conduct a legitimate noncommercial or fair use under Policy ¶4(c)(iii). Challenged Domain Name #1 was registered on March 4, 2015, Challenged Domain Name #2 was registered on June 17, 2015, and Challenged Domain Names 3 through 8 were registered on June 12, 2014. The Challenged Domain Names have been passively held since then, either hosting no content, or merely reflect a holding page.
Panels previously held that Respondent’s inactive use or passive holding of a disputed domain name is demonstrative of Respondent’s lack or rights or legitimate interests in the disputed domain name pursuant to Policy ¶¶4(c)(i) and (iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”).
Lastly, Complainant has not authorized Respondent to use Complainant’s Mark in any individual capacity, nor did Complainant at any time authorize Respondent to register any domain names on behalf of Complainant, including but not limited to the Challenged Domain Names.
In light of the foregoing, Respondent clearly lacks any rights and legitimate interests in the Challenged Domain Names name under Policy ¶4(a)(ii).
[c.] Respondent registered and used the Challenged Domain Name in bad faith pursuant to Policy ¶UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
Respondent has engaged in unscrupulous bad faith registration and use of the Challenged Domain Names. There is no question that Respondent knew about Complainant, Complainant’s Trademark, and Complainant’s trademark rights in the Trademark when he registered the Challenged Domain Names. Respondent is currently employed by Complainant. When Complainant’s business was first established, Respondent was Complainant’s employee. However, Respondent did not at any time receive Complainant’s authorization to register the Challenged Domain Names on Complainant’s behalf, and Buff Exteriors at no time authorized or consented to Respondent’s registration of the Challenged Domain Names. Simply stated, Respondent was well aware of Complainant and its intention and/or actual adoption of the Trademark when he registered the Challenged Domain Names because he was Complainant’s employee at the time Complainant was adopted the Trademark and Respondent registered the Challenged Domain Names. Respondent knew exactly what he was doing when he registered the Challenged Domain Names.
Furthermore, between at least March 2016 and August 2016, Buff Exteriors, through both myself and through Buff Exteriors’ legal counsel, have made numerous demands that Respondent transfer the Challenged Domain Names to Buff Exteriors. However, Respondent has failed and refused to transfer the Challenged Domain Names upon request. Instead, upon information and belief, Respondent registered the Challenged Domain Names to be used to redirect Internet traffic to Complainant’s competitors with which Respondent has been working (without Complainant’s knowledge) during his employ with Complainant.
While Respondent may argue whether or not Complainant’s trademark rights in the Trademark were established when Respondent began registering the Challenged Domain Names, his conduct was still in bad faith. “[W]hen the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.” Ontario, Inc. v. EXAIR Corporation, D2009-0567 (WIPO June 19, 2009).
Based on Respondent’s conduct, it is clear that Respondent registered the Challenged Domain Names with the hopes that the Challenged Domain Names someday would prove valuable and could be sold either to Complainant or to Complainant’s competitors for an outrageous profit. Otherwise there is no credible explanation why Respondent has refused to transfer the Challenged Domain Names to Complainant or used them in furtherance of Complainant’s services. Prior Panels found a willingness to sell the disputed domain name for an excessive amount without showing a plan or development costs to support the amount sufficient, standing alone, to support a finding of Policy ¶4(b)(i) bad faith. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
In addition, passive holding of a domain name is evidence of bad faith registration and use. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000); Mondich & Amer. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the Again, Respondent’s failure to develop a website in a two (2) year period following registration raises the inference of registration in bad faith); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) finding respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). Respondent’s passively holding the Challenged Domain Names for over two (2) years further supports a finding of bad faith registration and use pursuant to the Policy ¶4(a)(iii).
In the instant case, the totality of the circumstances are indicative of bad faith registration and use, namely Respondent’s subversive registration of the Challenged Domain Names while in Complainant’s employ, Respondent’s refusal to transfer the Challenged Domain Names to Complainant, and Respondent’s passive holding of the Challenged Domain Names for over two (2) years, preventing Complainant from making the full use intended by Internet policy for rightful holders of a mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order transferring or cancelling a domain name:
(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 has used its BUFF EXTERIORS mark in connection with providing roofing, siding, and gutter services since June 2014. Complainant has common law rights in the BUFF EXTERIORS mark based on its expenditure of approximately $53,748.00 on advertising and promotion of its services between June 2014 and August 2016 in the greater St. Louis, Missouri area (where Complainant does business). A complainant’s claim of common law rights in a mark is allowed 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). Complainant advertises its services through its website, direct marketing, Facebook, Internet search engine optimization services, and lead generation services. Complainant registered the buffexteriors.com domain name on May 5, 2014 to promote its business. Complainant has not provided any evidence its trademark was registered with the Missouri Secretary of State or the United States Patent and Trademark Office. 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). Complainant has established common law rights in the mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <buffexteriorsinc.com> and <buffexteriorsllc.com> domain names are confusingly similar to Complainant’s mark because they merely add the descriptive terms “inc” and “llc.” Complainant claims the <buffroofing.com> domain name is confusingly similar to Complainant’s mark because it replaces the term “exteriors” with “roofing” (which is a commercial area Complainant is active in). Complainant claims the <buffxteriors.com> domain name is confusingly similar to Complainant’s mark because it merely misspells Complainant’s trademark by dropping the letter “e” in “exteriors.” The <buffexteriorsinc.com>, <buffexteriorsllc.com>, and <buffxteriors.com> domain names eliminate the space between the words of Complainant’s mark, and all of the domain names affix the generic top-level domain (“gTLD”) “.com.” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Rackspace US, Inc. v. Russell Harrower, FA 1592005 (Forum Jan. 5, 2014) (holding that the <rackspace.xyz> domain name is identical to the complainant’s RACKSPACE mark, because, “the addition of a generic top-level domain is seen as trivial and non-distinctive for the purposes of this comparison does not lessen in any way the confusing similarity between the disputed domain name and Complainant’s mark.”), and see F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Likewise, the lack of a space is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits spaces. Panels have held such minor changes are insufficient to adequately distinguish a respondent’s domain 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 Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive)”). Respondent’s domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
Complainant claims Respondent has no rights or legitimate interests in the domain names. Respondent is not commonly known by the domain names. Complainant has not authorized Respondent to use Complainant’s mark in any individual capacity, nor did Complainant at any time authorize Respondent to register any domain names on behalf of Complainant. The WHOIS information merely lists “gregg buffington” as registrant. Respondent has failed to provide any evidence to the contrary for the Panel’s consideration. There is no obvious connection between Respondent’s name and the disputed domain names. There is no basis in the record to find Respondent is commonly known by the disputed domain names 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 Respondent uses the disputed domain name to redirect internet users to a competitor’s website. Respondent has failed to place any content on the website relating to the domain name. In Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) the panel declined to find respondent was using the domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the respondent used the domain names solely to divert Internet users to a website offering services that competed with complainant. This Panel would agree with that logic. Forwarding Internet users to a competing website is neither a Policy ¶4(c)(i) bona fide offering of goods or services nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use associated with this domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent is currently employed by Complainant and was employed by Complainant when the disputed domain names were registered. This means Respondent well knew the existence of Complainant’s common law mark before any of the domain names were registered. A respondent demonstrates 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).
Furthermore, Respondent works for a competitor of Complainant. Respondent obviously established these domain names to siphon business from Complainant to Complainant’s competitor by taking advantage of customers’ confusion about whose website they were actually visiting. This certainly constitutes bad faith registration and use under Policy ¶4(b)(iv).
Finally, Respondent clearly registered and uses these domain names to disrupt Complainant’s business. Since Respondent competes with Complainant, this constitutes bad faith registration and use under Policy ¶4(b)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <buffexteriorsinc.com>, <buffexteriorsllc.com>, <buffroofing.com>, and <buffxteriors.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, October 17, 2016
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