Handy Guy Inc. v. Merlin Kauffman
Claim Number: FA2205001998214
Complainant is Handy Guy Inc. (“Complainant”), represented by David J. Simonelli, Michigan, USA. Respondent is Merlin Kauffman (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <handyguy.com>, registered with Register.com, Inc. (the “Registrar”).
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.
David H. Bernstein as Chair, and Sandra J. Franklin and Gerald M. Levine as Panelists.
Complainant submitted a Complaint to the Forum electronically on May 26, 2022; the Forum received payment on May 27, 2022.
On May 30, 2022, the Registrar confirmed by e-mail to the Forum that the <handyguy.com> domain name is registered with the Registrar and disclosed that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the Registrar’s 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”). Complainant submitted an Amended Complaint on May 31, 2022 to address the information disclosed by the Registrar about the identity of the Respondent.
On May 31, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 2022 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@handyguy.com. Also on May 31, 2022, 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 June 24, 2022. An Additional Submission was received from Respondent on June 28, 2022, followed by Additional Submission from Complainant on June 29, 2022.
Because Respondent’s Additional Submission corrected an error in Respondent’s Response, the Panel accepts that submission under its authority through Rule 10 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). Because Complainant’s Additional Submission addressed an unexpected allegation in the Response about Complainant’s ownership of an additional domain name and responded to Respondent’s Additional Submission, the Panel accepts that Additional Submission as well.
On July 5, 2022, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed David H. Bernstein as Chair and Gerald M. Levine and Sandra J. Franklin as Panelists.
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 "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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a California company that provides consumer information on home contractor products and services on the website www.thehandyguy.com.
Complainant claims ownership of the trademarks The Handy Guy and Handy Guy and their associated logos. Complainant asserts that its priority in The Handy Guy mark dates back to its predecessor’s first use of the mark in 2008. Complainant itself first became present online when it acquired rights to the domain name <thehandyguy.co> on June 16, 2011; it registered <thehandyguy.co> because the disputed domain name was then owned by another entity. Complainant submits a screenshot of the site that includes a copyright notice of 2011-2012, to demonstrate that it was using this domain name as well as the name “The Handy Guy” prior to Respondent’s registration of the disputed domain name in 2013.
On March 9, 2018, Complainant purchased <thehandyguy.com>.
Also in March 2018, Complainant tried to purchase the disputed domain name for $5,000. Respondent offered to sell the name for $10,000, but Complainant demurred because it viewed Respondent’s price as exorbitant.
A month later, on April 11, 2018, the CEO of Complainant personally applied to the United States Patent and Trademark Office (“USPTO”) to register THE HANDY GUY and design. That application, claiming first use as of 2008 and first use in commerce as of 2010, has matured into Registration No. 6,016,119 (issued December 15, 2021). Complainant also applied for an intent-to-use (“ITU”) trademark application for HANDY GUY and design on March 29, 2021 (Serial. No. 90/610,011). That application was published on March 23, 2022 and allowed on June 7, 2022; Complainant has not yet filed a statement of use and this mark is not yet registered.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s marks because the disputed domain name incorporates the dominant portion of Complainant’s marks, namely, the words “Handy Guy.”
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. In support of that argument, Complainant argues that Respondent registered the disputed domain name after Complainant had acquired rights in The Handy Guy mark, and that Respondent has made no use of the disputed domain name other than to offer it for sale, all while the Complainant is the only party that is known by the disputed domain name.
Complainant contends that Respondent acquired the disputed domain name in bad faith because it intended to offer to sell the domain for valuable consideration in excess of out-of-pocket costs. Complainant also asserts that Respondent’s use of the disputed domain name has been in bad faith because it tarnishes Complainant’s business and marks by diverting customers, actual and potential, away from services that are provided by Complainant.
Complainant thus requests that the Panel transfer ownership of the domain name in dispute.
B. Respondent
Respondent asserts that its business model is to find domain names that have expired but can still be renewed, and to negotiate directly with the prior registrant to have the registrant renew the domain name and transfer it to Respondent before the name becomes freely available for others to register.
Respondent contends that, in May 2013, Respondent’s broker acquired the disputed domain name in this way, by persuading the prior owners of the disputed domain name to renew it and transfer it to Respondent’s broker for $500. Respondent’s broker, in turn, transferred the disputed domain name to Respondent on September 8, 2013. Respondent has since used the disputed domain name for a pay-per-click (“PPC”) landing page that includes advertising related to home improvement services, especially bathroom remodeling, and cell phones. The home improvement services are related to the common understanding of “handy guy” as referring to a handyman, while the cell phone ads evoke the use of the term “handy” as a word for a cell phone.
Respondent does not dispute that the <handyguy.com> domain name is confusingly similar to The Handy Guy trademark. Respondent does, however, contest Complainant’s allegation that Respondent has violated UDRP, and seeks a ruling that Complainant is engaging in reverse domain name hi-jacking.
First, Respondent contends that Complainant fails to provide evidence that it owns trademark rights that predate Respondent’s registration of the disputed domain name. Although Complainant claims rights based on its registration of the domain name <thehandyguy.co> and claims use of that name as a trademark prior to its application to register THE HANDY GUY in 2018, Complainant has submitted no evidence to substantiate its use of that term in a way that could create trademark rights. Among other things, Respondent notes that, at the time it acquired the disputed domain name, a third party, The Handy Guy, Inc., owned a federal trademark registration for THE HANDY GUY and design for handyman services (that registration was subsequently cancelled for failure to submit a statement of continuing use) and yet another party, The HandyGuy of Pittsburgh, had also been using a name incorporating “Handy Guy” in connection with its business of providing handyman services (this is the party from whom Respondent acquired the disputed domain name).
Second, Respondent notes that Complainant provides no evidence to establish that Respondent knew or should have known of Complainant’s alleged trademark rights at the time it acquired the disputed domain name, given both the highly descriptive nature of the disputed domain name and the fact that Complainant had not yet applied to register its trademark with the USPTO.
Third, Respondent contends that it does have legitimate interests in the disputed domain name because it acquired the domain name without knowledge of Complainant’s trademark rights and before Complainant had any proven trademark rights, and has used the disputed domain name for pay-per-click advertising that is related to the dictionary meaning of the domain name. Respondent also argues that it acquired the disputed domain name from the party that previously used the name in connection with a business operating as The HandyGuy of Pittsburgh, who had used the domain name to legitimately advertise home improvement services. Respondent states that Complainant has failed to explain why it is illegitimate for a previous registrant to sell a domain name to a subsequent user who then uses the domain name to advertise similar services.
Fourth, Respondent contends that bad faith registration cannot be found because Complainant has demonstrated no evidence of trade or service mark rights pre-dating Respondent’s registration of the disputed domain name of which Respondent could have been on notice at the time it negotiated to purchase the domain name. For the same reason, Complainant cannot establish bad faith use because, in light of Respondent’s legitimate interests, Respondent is free to sell the disputed domain name at the price it sees fit.
Finally, Respondent argues that Complainant is engaging in a “Plan B” UDRP, and may have registered its trademarks in bad faith. Respondent claims that it does not have evidence that Complainant attempted to buy the disputed domain name in March 2018. Regardless, Respondent asserts that the fact that Complainant applied to register “The Handy Guy” as a trademark just one month after making the alleged offer is a bad faith attempt to use a trademark registration as a premise for Complainant’s claims in this Proceeding.
Complainant is a California company that provides information on home contractor products and services to customers online. Complainant acquired the domain name <thehandyguy.co> in 2011 and acquired the domain name <thehandyguy.com> in 2018.
Respondent acquired the disputed domain name in 2013. The disputed domain name had previously been owned by an entity operating under the name “The HandyGuy of Pittsburgh.” Respondent uses the disputed domain name for a PPC website which displays advertising related to home improvement services and cellphones; the website also includes a banner at the top of the site offering the domain name for sale.
Complainant states that it contacted Respondent around March 2018 and attempted to purchase the disputed domain name, but refused to pay Respondent’s requested $10,000 price (which was $5,000 more than Complainant had offered). Respondent does not remember this fact, but also does not dispute it, so the Panel finds that Complainant did make this attempted purchase.
One month following this failed purchase, Complainant’s CEO personally applied to register THE HANDY GUY and design as a trademark with the USPTO. That mark was registered on March 24, 2020 (as Reg. No. 6,016,119) and subsequently assigned to Complainant. On March 29, 2021, Complainant filed an ITU application to register HANDY GUY and design (Serial No. 90/610,011); that application has been allowed but, as of the drafting of this decision, Complainant has not filed a statement of use and the mark has not been registered.
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 claims rights in the trademarks The Handy Guy and HANDY GUY. Because HANDY GUY is not yet registered but THE HANDY GUY is, and because the allowed ITU registration does not add any rights that are more extensive or senior than the trademark registration, the Panel will focus only on the THE HANDY GUY trademark. Although one might question how such a descriptive term for handyman services could be registered without any disclaimers and without a showing of acquired distinctiveness, Complainant’s registration serves as prima facie evidence of the mark’s validity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) at 1.2 (“Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”); Eauto, LLC v. Triple S. Auto Parts, D2000-0047 (WIPO Mar. 24, 2000) (accepting registration as prima facie evidence of validity even for a mark that appears descriptive).
The disputed domain name is confusingly similar to Complainant’s trademark. Except for the lack of the definite article “the,” the disputed domain name mimics the HANDY GUY portion of Complainant’s mark. “The addition or deletion of a definite article is irrelevant to a determination of confusing similarity.” The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340 (June 26, 2006); WIPO Jurisprudential Overview 3.0 at 1.7 (“[I] n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”).
Respondent suggests that Complainant’s registration should be disregarded because Complainant applied for the trademark registration after the registration of the disputed domain name, and because Complainant has not established that it had any trademark rights prior to the filing date of the trademark application (which itself was five years after Respondent registered the disputed domain name). As Respondent acknowledges, however, the Policy does not require Complainant to possess senior rights to succeed under the first factor. “The issue under the first factor is limited to whether Complainant has trademark rights as of the time of the filing of the Complaint.” The Landmark Group v. DigiMedia.com, L.P., Forum Claim No. 285459. As a matter of standing, Complainant has shown that it has trademark rights today and that the disputed domain name is confusingly similar to that mark.
Respondent suggests that it has rights or legitimate interests in the disputed domain name because it is in privity with the prior owner of the disputed domain name, who used the disputed domain name for a handyman business. That suggestion has no merit. Respondent may have acquired the disputed domain name from The HandyGuy of Pittsburgh, but there is no evidence in the record to suggest that Respondent also acquired the HANDYGUY trademark from the seller or that it has continued to use the trademark for handyman services. Although Respondent does use the disputed domain name <handyguy.com> for a PPC page with links to handyman services, the use of a domain name itself is not sufficient to establish trademark rights. Thus, Respondent cannot rely on the seller’s rights or legitimate interests in the disputed domain name in this proceeding (just as a prior registrant’s bad faith or illegitimate usage would not necessarily taint a new registrant).
Nevertheless, Respondent can have a legitimate interest if it is using the disputed domain name for a PPC landing page with advertising links that are tied to the dictionary meaning of the domain name. See generally WIPO Jurisprudential Overview 3.0 at 2.9 (“Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark.”). Here, the advertising links are tied to handyman services and cell phones, both of which are directly related to the dictionary meaning of the domain name.
Even if a respondent is using a domain name for a PPC page that draws on the dictionary meaning of the term, such a use may give rise to rights or legitimate interests only if the use is bona fide. Id. (“the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”). Among other things, that means that the respondent is not using the domain name as a pretext for cybersquatting, is not using the domain name to target the brand owner in bad faith, and is not using the domain name in a way that infringes another’s trademark. See, e.g., mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141 (“[PPC] landing pages arguably provide little societal benefit, but the relevant question here is whether they represent a ‘use . . . in connection with a bona fide offering of goods or services’ sufficient to give rise to rights or legitimate interests under paragraph 4(c)(i) of the Policy.”); Hyperdoc Inc. v. Siroker, Forum Claim No. 1972428 (use is illegitimate, not bona fide, where respondent adopted allegedly descriptive term with knowledge of complainant and its mark); On AG, On Clouds GmbH v. Nguyen Luu, Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Vuong Hoang, AN NGUYEN, NEO CORP., and Ngoc Tam Nguyen, WIPO Case No. D2021-1714 (“[A] use cannot be deemed bona fide if the disputed domain names constitute trademark infringement. Sai Machine Tools Pvt. Ltd. v. Mr. Sudhir Jaiswal, Shree Sai Extrusion Technik Pvt. Ltd, WIPO Case No. D2018-2560 (‘bona fide use is predicated on honest adoption of the name’ and respondent failed to show such honest adoption; rather, respondent’s use was infringing and therefore not bona fide); Schouten Industries B.V. and Schouten Products B.V. v. Canadian Soylife Health Co., Forum Claim No. FA0303000149188 (where respondent adopted domain name with actual knowledge of complainant’s trademark and used the domain name in a way likely to cause confusion, the offering of services under such a mark is infringing, not bona fide).”)
A key question in this case is thus whether, when Respondent adopted the disputed domain name, it did so with knowledge of Complainant, with an intent to take advantage of Complainant’s trademark, or in a way that infringed any rights Complainant had at the time.
Complainant has not met its burden on any of these points. When Respondent acquired the disputed domain name in 2013, Complainant had no trademark registration or pending application. Complainant’s subsequently-obtained registration is prima facie evidence of the validity of the trademark, but that registration does not give Complainant any priority rights against a party who used the mark prior to the 2018 filing. 15 U.S.C. § 1057(c).
Nor is the claimed date of first use in the application definitive evidence that the mark actually was used and valid prior to the filing of the application. Rather, as Respondent points out, where there is a dispute between parties as to the validity of a mark in the period prior to the filing date, “a date of use must be established by appropriate evidence. A date of use set forth in an application or registration owned by applicant or registrant is not evidence on behalf of that applicant or registrant.” Trademark Manual of Examining Procedure 903.06 (miscited by Respondent as 903.07).
Complainant has not submitted evidence of the scope and extent of its use of the mark prior to the 2018 filing of its application. Rather, it simply has asserted, without much in the way of supporting facts, that it used the mark since 2008. For example, Complainant provides no information on the geographic extent of its use of the mark, its advertising expenditures for the mark, its use of the mark in advertising, its revenue for services provided under the mark, the extent to which its mark was coexisting with other users at the time, or the extent to which its mark was perceived by consumers as a brand name with secondary meaning. The only example of its use of the mark in the promotion of its services is a screenshot of its old website, which appears to date from 2012 based on the copyright notice, but that simply shows a website using the “the Handy Guy” name at the top for handyman services in the Las Vegas area. Without more, that single screenshot is not sufficient to establish trademark rights, especially since a third party (The Handy Guy, Inc.) had an active federal registration for THE HANDY GUY at that time (although Respondent’s submission suggests that this mark may no longer have been in use in 2012) and another party (The HandyGuy of Pittsburgh, from whom Respondent acquired the disputed domain name) appeared to be using essentially the same mark in another region of the country (see https://web.archive.org/web/20121025161013/http://www.handyguy.com/). In the absence of further evidence, Complainant has failed (at least on the record before the Panel) to establish that it had trademark rights that predate the 2018 priority of its trademark registration.
For its part, Respondent has submitted evidence that it used the disputed domain name for its PPC landing page prior to the date that Complainant applied to register its mark. Complainant has failed to submit any evidence that Respondent likely knew of Complainant or acquired the disputed domain name to target Complainant.
Considering the record before the Panel, the Panel finds that Complainant has failed to show that it had trademark rights in 2013, when Respondent registered the disputed domain name, and has failed to show that Respondent registered the disputed domain name because of Complainant’s or any other party’s trademark rights. Rather, the Panel finds that Respondent registered the disputed domain name because of its descriptive nature with the intent of using the domain name for a PPC website related to the descriptive meaning of the domain name and to potentially thereafter sell it, as Respondent sees fit. The Panel thus finds that Complainant has failed to prove by a preponderance of the evidence that Respondent lacks rights or legitimate interests in the disputed domain name.
Given the Panel’s findings above, the Panel need not address whether Respondent registered and used the disputed domain name in bad faith. The Panel nevertheless briefly notes that Respondent’s acquisition of the disputed domain name for its descriptive nature, rather than to target the Respondent, is evidence that Respondent did not register the disputed domain name in bad faith. Similarly, although PPC landing pages may be of limited society value, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141, Respondent has used the disputed domain name since prior to Complainant’s establishment of trademark rights in connection with a PPC landing page that provides advertising links based on the dictionary value of the domain name. Landmark Group v. DigiMedia.com, L.P., Forum Claim No. 285459.
Complainant argues that Respondent’s offer to sell the disputed domain name for $5,000 (an amount above Respondent’s $500 acquisition expense) is evidence of bad faith use, but the Panel cannot agree. Given that Respondent has rights in the disputed domain name, Respondent is free to sell its rights for a profit. Buhl Optical Co. v. Mailbank.com, Inc., WIPO Case No. D2000-1277; E-Renter USA Ltd. v. Domain Hostmaster, WIPO Case No. D2015-0784.
The Panel therefore finds that Complainant has failed to establish that Respondent registered and used the disputed domain name in bad faith.
Respondent requests a finding of reverse domain name hijacking (“RDNH”). Paragraph1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” To prevail on such a claim, a Respondent must show that the Complainant knew of the Respondent’s legitimate interests in the disputed domain name, knew of Respondent’s lack of bad faith, or ought to have known that it could not succeed as to the elements of the policy under any fair interpretation of the facts. WIPO Jurisprudential Overview 3.0 at 4.16.
The Panel agrees with Respondent that a finding of RDNH is appropriate in this case. Although Complainant does have a trademark registration, it only sought to register its mark after its failed attempt to purchase the disputed domain name. It provided the Panel with extremely limited evidence of its claimed rights in the HANDY GUY trademark in the period prior to its 2018 application (and only provided a single screenshot showing some use in 2012 in its Additional Submission), and even acknowledged that other parties (including the party from whom Respondent purchased the disputed domain name) were using the “Handy Guy” name in connection with their own offering of handyman services. Complainant also failed to address in its submissions the fact that Respondent was using the disputed domain name for PPC links that were plainly related to the dictionary meaning of the domain name; rather, Complainant incorrectly asserted that Respondent was making no use of the disputed domain name except to offer it for sale.
In the face of these facts, if Complainant wanted this domain name, it should have bought it. Indeed, it tried to buy it, but rejected Respondent’s $10,000 offer as exorbitant. Whether that price is too high or not, it is Respondent’s prerogative to set the price for a domain name in which it has rights. Complainant’s resort to the UDRP is a classic “Plan B” UDRP that reflects bad faith abuse of the UDRP by Complainant.
One issue that gave the Panel pause is that Respondent’s Response included allegations that Complainant had committed perjury and submitted false statements in its Complaint and supporting declaration. Those allegations were incorrect, and suggest that Respondent itself failed to adequately investigate the facts before making such an explosive allegation in its submission to the Panel. That alone might have been a reason to deny a finding of RDNH. See Breazy Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / VR PRODUCTS I LLC, WIPO Case No. D2021-1486 (declining to find RDNH because a “request for a finding of Reverse Domain Name Hijacking is an equitable remedy, and equitable relief should only be available to a party who comes before a panel with clean hands”). However, Respondent quickly realized its error and submitted a correction just four days after submission of its Response (and prior to Complainant’s Additional Submission). Given that Respondent corrected its mistake on its own, the Panel concludes that this initial error is not a basis to decline to find RDNH by Complainant.
The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED and declares that the Complaint was brought in a bad faith to attempt to deprive Respondent of its domain name.
Accordingly, it is Ordered that the <handyguy.com> domain name shall REMAIN WITH Respondent.
David H. Bernstein, as Chair, along with
Sandra J. Franklin and Gerald M. Levine, as Panelists
Dated: July 20, 2022
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