DECISION

 

Steri-Clean, Inc. v. Jeffrey Dabdoub / Florida Property care llc

Claim Number: FA2311002069041

 

PARTIES

Complainant is Steri-Clean, Inc. ("Complainant"), represented by Sophie Edbrooke of Gerben Perrott PLLC, District of Columbia, USA. Respondent is Jeffrey Dabdoub / Florida Property care llc ("Respondent"), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <xstericlean.com>, registered with Godaddy.Com, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Jeffrey J. Neuman as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 1, 2023; Forum received payment on November 1, 2023.

 

On November 1, 2023, Godaddy.Com, Llc confirmed by e-mail to Forum that the <xstericlean.com> domain name is registered with Godaddy.Com, Llc and that Respondent is the current registrant of the name. 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 November 2, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 2023 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@xstericlean.com. Also on November 2, 2023, 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 November 21, 2023.

 

On November 22, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Jeffrey J. Neuman as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Steri-Clean, Inc. is the owner and operator of the website <steri-clean.com>. Steri-Clean provides comprehensive cleaning and decontamination services, with a focus on helping clients recover from traumatic events such as crime scenes and hoarding solutions (the "SC Services").  

 

Complainant owns several United States trademarks used in connection with its business including STERI-CLEAN INC. (Registration No. 4,146,231) and STERI-CLEAN (Registration No. 4,216,977) among others (collectively the "SC Marks"). The SC Marks were both registered in 2012 and have been used in connection with the SC Services since 1995.  Complainant registered <steri-clean.com> with GoDaddy.com, LLC in 2006.

 

Respondent registered the domain name <xstericlean.com> on June 13, 2023 with GoDaddy.com, LLC ("Disputed Domain Name"). Respondent's Infringing Domain Name is nearly identical and confusingly similar to the Complainant's STERI-CLEAN mark because Respondent merely adds the article "x" to the front of Complainant's SC Marks and does not contain a hyphen. Since the Complainant's website and the Disputed Domain Name share the terms STERI-CLEAN and the extension ".com" in their names, this will lead Internet users to incorrectly believe that the Infringing Domain Name is operated under, related to, or endorsed by Complainant.

 

Respondent has no rights or legitimate interests in the Disputed Domain Name because Respondent is not commonly known by the Disputed Domain Name, nor has it been authorized by Complainant to use the SC Marks.  Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name because it is misappropriating Complainant's mark to profit from it. Respondent's website exists to confuse consumers and benefit from the significant goodwill that SC has already achieved. Respondent deceitfully attracts Internet traffic to its website and/or otherwise diverts Internet users third party advertisements presumably to expose Internet users to profit off the "pay-per-click" links.

 

Respondent has both registered and used the Disputed Domain Name in bad faith because it registered the Disputed Domain Name containing the SC Marks to deceive consumers into believing it is the Complainant's Website and to profit off of the SC Marks using pay-per-click links on the Disputed Domain Name.

 

B. Respondent

Respondent contends that the Disputed Domain Name is not identical nor confusingly similar to the Complainant's STERI-CLEAN mark in that the domain name it registered <xstericlean.com> starts with the letter "x" and does not have a hyphen in between the "Steri" and "Clean" parts of the Complainant's mark.   

 

Respondent owns and maintains an active company called "XSTERICLEAN, LLC" registered in the State of Florida, United States since June 2020.  Respondent also argues that the term STERICLEAN is derived from the words "Sterile" and "Clean" and these terms are "not able to be trademarked by anyone including the Complainant."

Respondent has a bona fide Limited Liability Company registered and has been doing business in the state of Florida for almost four years. There are fixed assets, a bank account and phone numbers used for Respondent's corporation which bear the Identical name of the Disputed Domain Name. Respondent has also maintained a business Facebook page since July 19, 2020, with the identical name of the Disputed Domain Name.  This page has been accessible via Google searches since 2020.

 

FINDINGS

1.  Complainant, Steri-Clean, Inc., has trademark rights in the mark "STERI-CLEAN" in connection with Bio-hazard, crime scene, suicide and other residential and commercial cleaning services through its registration of the mark with the USPTO (e.g., Reg. No. 4,216,977 registered in 2012).  The registration states that the services have been offered in commerce since at least 1995.

 

2.  Respondent, Jeffrey Dabdoub, the owner of a business in Florida called XSTERICLEAN LLC, registered the disputed domain name <xstericlean.com> on June 13, 2023.  XSTERICLEAN, LLC was formed on June 4, 2020, as a Florida Limited Liability Company. The Disputed Domain Name currently points to a GoDaddy Parking Page.  

 

3.  Although the Respondent argues that the Disputed Domain Name is not identical to the Complainant's STERI-CLEAN trademark, the Panel finds that for the purposes of Policy ¶ 4(a)(i), the Disputed Domain Name is confusingly similar to the Complainant's mark.

 

4.  The Panel finds that the Complainant failed to meet its burden to establish that (a) the Respondent has no rights or legitimate interests in the Disputed Domain Name under Policy ¶ 4(a)(ii); or (b) that the Respondent registered and used the domain name in bad faith under ¶ 4(a)(iii) of the Policy.  The UDRP is intended to address the abusive registration and use of a domain name and is not intended to address more complex cases involving potential trademark infringement.  Such issues are reserved for national courts which involve discovery, the presentation of evidence, and the cross examination of witnesses.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

Complainant asserts rights in the STERI-CLEAN mark based upon several registrations with the United States Patent and Trademark Office ("USPTO"). Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i).. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant's USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant's registrations include STERI-CLEAN INC. (Registration No. 4,146,231) and STERI-CLEAN (Registration No. 4,216,977) among others (collectively the "SC Marks"). The SC Marks were both registered with the USPTO in 2012 and have been used in connection with the SC Services since 1995.

 

Complainant argues that Respondent's <xstericlean.com> domain name is confusingly similar to Complainant's SC Marks because it: (a) incorporates the entirety of the mark, (b) simply adds an "x" prior to the Complainant's mark, (c) removes the hyphen contained between the "Steri" and "Clean" portions of the SC Mark, and (d) adds the ".com" gTLD.

 

Respondent argues that the addition of the letter "x" prior to the STERI-CLEAN mark along with the removal of a hyphen, sufficiently distinguish the Disputed Domain Name from the Complainant's mark to the point where they are no longer identical or confusingly similar.

 

However, the Panel disagrees with the Respondent. For the purposes of the Policy (as opposed to how it would be treated under trademark law), the disputed domain name, <xstericlean.com> is identical or confusingly similar to the Complainant's mark.  This first element functions primarily as a standing requirement and requires only a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.   See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudence Overview 3.0") at § 1.7.  Where the 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.

 

Using this standard, it is well established that the addition of a single letter to a domain name, or the removal of a hyphen from a mark, are not by themselves sufficient to distinguish a domain name from an incorporated mark for purposes of the standing requirements set forth in Policy ¶ 4(a)(i) analysis. See MTD Products Inc. v.  juan Li, FA 1864629 (Forum Nov. 11, 2019) (finding that <yardmanlawnmower.net> was confusingly similar to the complainant's "YARD-MAN" mark) (citing Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where "[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term 'outlet' to Complainant's registered SKECHERS mark, and appends the '.com' top-level domain."). 

 

The Panel therefore determines the Disputed Domain Name is confusingly similar to the STERI-CLEAN mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must then make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.").

 

Under Policy ¶ 4(c)(ii), Complainant contends that Respondent lacks rights or legitimate interests in the Disputed Domain Name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized, or granted a license, to Respondent any rights in the STERI-CLEAN mark.  In addition, the Complainant must show that the Respondent is not using, and has not used, the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that the domain name resolves to an inactive website with little content other than a few pay-per-click links. Complainant provides a screenshot showing a GoDaddy parking page that contains links to "Antibacterial Wipes", "Adoucisseur Culligan" and "On Day Trip".

 

Respondent argues however that the domain name corresponds to its business, XSTERICLEAN LLC, which it registered with the State of Florida in 2020, well before this dispute was initiated. Respondent provides a copy of the Articles of Incorporation for XSTERICLEAN LLC, dated June 4, 2020, which contains Respondent's name as both the Manager and the Registered Agent of the LLC as well as picture of what appears to be a trailer bearing the name "XSTERICLEAN" under an "X" logo.  Respondent also provides what appears to be a screenshot from the Florida state Corporation website listing the same information as contained in the Articles of Incorporation for the XSTERICLEAN LLC and links to the 2021, 2022, and 2023 Annual Reports. Although the source of the screenshot was not identified, the Panel verified that it indeed resembled the information provided from the Florida Division of Corporations. It is worth noting that the Facebook page, which is mentioned by Respondent, contains an "X" symbol like that on the picture of the trailer above. It has very little content, but appears to be a post from July 2021 in which the profile was created,  and two reviews that are dated August 21, 2021. Finally, Respondent argues that it does not profit off of the pay-per-click ads generated by the Registrar's parking page.

 

Ultimately, the Panel finds that Complainant has not met its burden of establishing that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Complainant argues that Respondent cannot have any rights to the domain name because it is not commonly known by the Disputed Domain Name because of the information contained within the WHOIS record. Although the WHOIS record is a place to look at when assessing whether a Respondent is commonly known by the Disputed Domain Name, this information is usually only dispositive in cases where the Respondent, unlike it did here, failed to submit a response. Although there is little information given by the Respondent about the business that it conducts under the XSTERICLEAN name, it has provided credible evidence that it formed a Limited Liability Company in 2020 in the State of Florida which bears the XSTERICLEAN name. Respondent also provides a picture of a trailer bearing the XSTERICLEAN name, and cites a Facebook page (which the Panel verified), that contains the information stated above.

 

Complainant also makes the argument that because the website associated with the Dispute Domain name has "no connection with bona fide offering of goods and services … the inference is one of diversion of Internet traffic, not legitimate use." It concludes that "Respondent deceitfully attracts internet traffic to its website and/or otherwise diverts Internet user [to] third party advertisements presumably to expose Internet users to profit off the "pay-per-click" links."

 

Previous panels have held that Respondent's use of a domain to redirect users to competing services fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) ("The Panel finds Respondent's use of the Disputed Domain Names to feature parked hyperlinks containing links in competition with Complainant's legal services 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 pursuant to Policy ¶ 4(c)(iii)."). In addition, as the owner of the Disputed Domain Name, Panels have held registrants responsible for the content, including parked content, at the resolving webpage. See Park 'N Fly Service Corporation v. Kevin Lanzillo, FA 1554365 (Forum May 13, 2014) (holding that it is ultimately "the Registrant responsible for the content of the material appearing on the webpage associated with the domain name in [a] dispute").

 

However, upon closer examination of the screen shot provided by Complainant, it appears that the "pay-per-click" ads contained on the website of the Disputed Domain Name were generated by GoDaddy, the domain name Registrar from which the Domain Name was purchased.  As this Panel found in State Farm Mutual Automobile Insurance Company v. Robert Goldman / A4M, FA 2003300 (Forum Sept. 13, 2022): 

 

Registrants, especially those that do not buy or sell domain names for a living, should not be held responsible for parking pages that are stood up by default by its domain name registrar, especially where registrants derive no financial or other benefit from the content or links contained on the website other than letting others know that the domain name has been registered. The Panel notes that it is an unfortunate common practice of registrars to place advertising on the landing pages of its customers' domain name where its customers have not published any content of its own on the domain.  Most registrants are likely unaware of this practice and like the Respondent receive no benefit, financial or otherwise, from such a landing page.  Nor are most registrants aware that they can change their settings at a registrar to not allow this to happen.  It would be unfair to hold registrants that are unaware of this practice accountable for the actions of its registrar.

 

In the State Farm case, the Panel found that the Complainant did meet its burden in establishing that the Respondent lacked rights or legitimate interests to the disputed domain name, not because of the Registrar-provided pay-per-click links, but rather because unlike here, there was no affirmative evidence proffered by the Respondent that would demonstrate it had legitimate rights. Here the Respondent does provide affirmative evidence of its use of the XSTERICLEAN name, and that evidence has not been disputed or contested by the Complainant.

 

For the reasons above, the Panel finds that the Complainant has not met its burden to establish that the Respondent does not have rights or legitimate interests to the Domain Name.

 

Registration and Use in Bad Faith

Having found that Complainant has not met its burden of establishing that the Respondent does not have a right or legitimate interests in the Disputed Domain Name, it is not necessary to address whether the Disputed Domain name was registered and used in bad faith.

 

"It is important to keep in mind that the Policy was designed to prevent the extortionate behavior commonly known as cybersquatting. It cannot be used to litigate all disputes involving domain names." Oki Data Americas, inc. v ASD, Inc. D2001-0903 (WIPO November 6, 2001)

 

The Panel notes that the finding here that the Complainant has failed to establish all three elements of the policy does not in any way imply that the Respondent is or is not potentially infringing on the rights of the Complainant. However, a true determination of whether the use of a mark by a third party infringes upon the rights of a trademark owner requires a complete evidentiary record, the opportunity to present witnesses, expert opinions, and to cross examine those witnesses and experts.  The evidentiary and legal issues that are required to make a finding of infringement are not appropriate to the very narrow scope of the Policy and would best be dealt with in a forum with more robust evidentiary tools. 

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <xstericlean.com> domain name REMAIN WITH Respondent.

 

 

 

Jeffrey J. Neuman, Panelist

Dated: December 5, 2023