DECISION

 

Boxford Chimney Sweep, LLC v. Keren Leve / Magnetic Services LLC

Claim Number: FA2411002124552

 

PARTIES

Complainant is Boxford Chimney Sweep, LLC ("Complainant"), represented by Nathan T. Harris of Lando & Anastasi, LLP, Massachusetts, USA. Respondent is Keren Leve / Magnetic Services LLC ("Respondent"), represented by Dianne Smith-Misemer of Hovey Williams LLP, Kansas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <boxfordchimneysweep.us>, registered with NameSilo, LLC (the "Disputed Domain Name").

 

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.

 

        Kendall Reed as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 12, 2024; Forum received payment on November 12, 2024.

 

On November 12, 2024, NameSilo, LLC confirmed by e-mail to Forum that the <boxfordchimneysweep.us> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name.  NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").

 

On November 15, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 2024 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@boxfordchimneysweep.us. Also on November 15, 2024, 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 December 5, 2024.

 

On December 5, 2024, pursuant to the Parties' requests to have the dispute decided by a single-member Panel, Forum appointed Kendall Reed as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.       Complainant

Complainant has operated under the mark BOXFORD CHIMNEY SWEEP since 1989. In that time, principal John Croteau and his family-run business have performed thousands of chimney cleanings, linings, repairs, and more to the satisfaction of homeowners, contractors, and other professionals in Massachusetts and surrounding states. Complainant owns and operates the domain <boxfordchimneysweep.com>. Through longstanding use of the mark for 35 years, and the widespread respect and recognition Complainant's work has earned, the BOXFORD CHIMNEY SWEEP mark is distinctive of Complainant's services. The BOXFORD CHIMNEY SWEEP mark has been registered as a Massachusetts service mark, following a substantive examination.

 

B.       Respondent

Respondent owns and operates a tech-enabled service company that provides lead generation and content creation services. The Respondent provides its lead generation services based on generic and descriptive terms, including geographic references. The Respondent registered the <boxfordchimneysweep.us> domain name in accordance with these conventions and was not aware of the Complainant or its business at the time of registration. Furthermore, the Respondent firmly denies any allegations that it has engaged in any fraudulent or illegal conduct, or that it has attempted to impersonate the Complainant or its principals, or to mislead consumers into believing that it is affiliated in any way with the Complainant, its business, or its services.

 

DISCUSSION

Paragraph 15(a) of the Rules to the usTLD Dispute Resolution Policy ("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 or is being used in bad faith.

Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the usTLD Policy (the "Policy"), the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

The first element of the Policy concerns standing and has two aspects: firstly, Complainant must establish that it has rights in a trademark; and secondly, the Disputed Domain Name must be identical or confusingly similar to the trademark.

 

Absent a trademark registration from a national trademark office, such as the United States Patent and Trademark Office (USPTO ), rights in a trademark can be established by way of evidence that a putative trademark has acquired secondary meaning, that is, the putative trademark has acquired the status of a common law trademark.

 

"Secondary meaning" means that a putative mark has become a distinctive identifier of the source of the involved goods or services. Evidence that a putative mark has become a distinctive identifier includes evidence such as the length of time the putative mark has been used in connection with certain goods or services, the amount of sales under the putative mark, the nature and extent of advertising, consumer surveys, and media recognition. Importantly, secondary meaning can exist only in a small geographic area. WIPO Overview 3.0, §1.7.

 

These listed requirements can be seen as falling into two general categories, both being necessary. The first concerns the extent of a complainant's efforts to put the putative trademark out into the marketplace, such as the nature of the use, the length of time over which the use has occurred, and the expenditure on marketing efforts. The second concerns the reaction of the marketplace, such as media coverage and customer surveys. This is not to say that such requirements are necessarily exclusive, and whereas panels do focus heavily on these, other types of evidence could potentially be useful in establishing that a putative mark has become a distinctive identifier of the source of goods and services.

 

Further, the quantum of evidence required to establish secondary meaning varies depending on the strength of the putative mark in terms of its distinctive or generic quality. The amount of evidence needed is relatively less for a distinctive putative mark and relatively more for a generic putative mark.

 

In Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA 1730673 (Forum June 1, 2017), (involving the asserted putative mark "Karen Koehler" and involving the disputed domain name <karenkohlerblog.com>), secondary meaning was found based on evidence of extensive use of the putative mark, market recognition, and media coverage:

"[a] mark can generate a secondary meaning sufficient to establish Complainant's rights when consistent and continuous use of the mark has created distinctive and significant good will… Complainant has published under the KAREN KOEHLER name extensively, and Complainant's legal skills have been recognized by various organizations and groups with extensive positive media coverage. Complainant also operates an online blog associated with the KAREN KOEHLER mark…"

 

in Wasatch Shutter Design v. Duane Howel/The Blindman, FA 1731056 (Forum June 23, 2017), (involving the asserted putative marks "Wasatch Shutter" and "Wasatch Shutter Design" and involving the disputed domain names <wasatchshutters.com> and <wasatchshutterdesign.com>), the Panel did not find secondary meaning because the complainant did not provide evidence about marketing spending, consumer surveys, media recognition, or the extent of Complainant's use of the mark(s). Further, the panel clearly articulated the heightened need for evidence when a putative mark is generic:

"The Panel finds that, in cases involving claimed common law trademark that are comprised of generic, descriptive, or geographic words such as the words WASTACH, SHUTTERS(S), and DESIGN in the case at hand, there is an even greater onus on Complaint to present compelling evidence of secondary meaning or distinctiveness."

 

In TimeWorks, LLC v. Shadwan Swed, FA 1519030 (Forum Oct. 15, 2013) (involving the asserted putative mark "plstore.com" and the disputed domain name <plstore.com>), the panel did not find secondary meaning because the evidence did not include "…information about sales, customers, search engine recognition, or Complainant's investment in its site."

 

In Monument Traders Alliance, LLC v. Nicholas Thomas / Thrift Technologies, FA 2053092 (Forum Aug. 28, 2023) (involving the asserted putative mark "The War Room" and the disputed domain name <thewarroom.ag>), the panel did not find secondary meaning because the complainant did not provide sufficient evidence about customer recognition:

"In reviewing and weighing the evidence submitted by Complainant, principally Complainant's Exhibits 3 and 5, together with Mr. Fitzwater's Declaration, the Panel is of the view that although at least some of Complainant's customers may associate THE WAR ROOM mark with Complainant's goods, the Panel is nevertheless reluctant to generalize from such a small sample to conclusions regarding the consuming public at-large and instead takes a position that because the evidence was sought and collected by Complainant from only a few customers who have dealt with Complainant since on or around 2019, the evidence is not altogether persuasive or conclusive on the issue of how the average customer for the Complainant's product perceives the words of the subject mark in conjunction with the Complainant's products." 

 

In the present matter, Complainant's putative mark is generic and is near the extreme generic end of the distinctive/generic continuum. It consists of a geographic identifier, Boxford (located in Massachusetts), in combination with a descriptive term "chimney sweep." Further, Complainant's use of its putative mark is in a generic sense. Complainant's website, to which Complainant's domain name <boxfordchimneyshweep.com> directs, consists of a description of its services, including chimney cleanings, chimney linings, chimney caps and dampers, and other related products and services (Complainant's Exhibits 4).

 

As such, the evidentiary burden on Complainant is high, and Complainant has failed to meet this burden.

 

Complainant provides the following evidence of secondary meaning:

- A declaration under the penalty of perjury that it has been doing business as Boxford Chimney Sweeps since 1985, the declaration appearing in a trademark application filed with the State of Massachusetts (Complainant's Exhibit 2).

 

- A screenshot of pages of ANGI List reviews presenting 11 customer reviews concerning Complainant, the earliest being dated February 2017 (Complainant's Exhibit 3).

 

- Screenshots of 6 versions of its website, the earliest being dated 2009 (Complainant's Exhibit 4).

 

- A declaration by a local tradesman in which the declarant states he is aware of Complainant and its goods and services and further describes competitive efforts by or on behalf of Respondent (Complainant's Exhibit 5).

 

- A chart showing that there is only one geographic area in the United States with the name Boxford and only 5 in the world (the others being in England) (Complainant's Exhibit 7).

 

Although this evidence is relevant, it is not sufficient. Complainant would need to provide at least additional evidence about its marketing efforts related to its putative mark (other than and in addition to its website), marketing expenditures generally, consumer surveys, and the extent of media recognition.

 

The noted trademark application filed by Complainant with the State of Massachusetts appears to have matured into a registration on May 13, 2004 (Complainant's Exhibit 2), although it is not altogether clear whether this was the date on which the application was filed or the date on which a registration was issued. In any event and taking this evidence in the light most favorable to Complainant, it is not persuasive because state trademark registrations are not generally afforded the same deference as registrations issued by national trademark offices. See Town of Easton Connecticut v. Lightining PC Inc., FA 1220202 (Forum Oct. 12, 2008):

"Normally, a trademark registration is entitled to a presumption of validity and to deference by a UDRP Panel. However, where the mark has been registered only in a State, and not with the United States Patent and Trademark Office (or a comparable foreign trademark office), no such deference is due because State registrations, which are usually granted automatically or only after a cursory review for exact matches on the State's trademark registry, are unexamined and thus are not deserving of any presumption of validity." 

 

Even if the State of Massachusetts did engage in some level of scrutiny in connection the prosecution process, as asserted by Complainant, Complainant would need to demonstrate that the process employed by the state was functionally equivalent to that employed by the United States Patent and trademark Office. If this was the case, Complainant has not made this clear.

 

Complainant cites The New England Vein & Laser Center, P.C. v. Vein Centers for Excellence, Inc. D2005-1318 (WIPO Feb. 2, 2006) for the proposition that a trademark registration by the State of Massachusetts does confer trademark rights for purposes of the Policy. However, the panel in that case did not consider (or at least did not report its consideration of) the issue of the level of scrutiny that was or was not employed by the State of Massachusetts. Rather, the panel appears to have accepted the registration at face value, only noting that descriptive terms are not allowed to be registered under Massachusetts law, and thus leaving a number of important questions unanswered.

 

The second part of Policy Paragraph 4(a)(i) concerns whether the Disputed Domain Name is identical or confusingly similar to Complainant's mark. Assuming that trademark rights could be established, the Panel notes that it would likely find that the Disputed Domain Name is identical.

 

As such, the Complainant has failed to establish the first element of the Policy.

 

Rights or Legitimate Interests

Without Complainant having a trademark, the Policy does not apply to the situation between the parties. However, for the sake of completeness, the Panel wishes to note that if Complainant did have a trademark, the Panel would likely find that Respondent did not have legitimate interests in respect to the Disputed Domain Name. This is because Respondent would be using the Disputed Domain Name to compete with Complainant by way of Respondent's use of the Complainant's mark, and as such, its use would be in bad faith, as noted in the section below.  See International Data Group, Inc. v. K McGovern, D2005-0960 (WIPO October 31, 2005):

"However, the proper enquiry on this issue is not whether a respondent is conducting a legitimate business, but whether he has a right or legitimate interest in the domain name itself; thus, a respondent might have a legitimate business and yet be obliged to conduct it under a different name from the complainant's trademark. For that reason, it has long been held that the mere fact that a respondent has used the domain name to set up a business is not sufficient to show that it has a right or legitimate interest in the domain name."

 

Registration or Use in Bad Faith

As said, the Policy does not apply to the situation between the parties in the absence of Complainant having a trademark. But again, and for the sake of completeness, the Panel wishes to note that if the Complainant did have a trademark, the Panel would likely find Respondent's use of the Disputed Domain Name as being in bad faith.

 

The Disputed Domain Name directs to a website on which Respondent offers chimney sweep services and related products in the Boxford, Massachusetts area (Complainant's Exhibits 6). This puts Respondent in direct competition with Complainant, and such would likely be a bad faith use under Policy Paragraph 4(b)(iv).

 

In this regard, the Panel further notes that in the .us context a bad faith use by Respondent would be sufficient by itself. 

 

DECISION

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

 

The Complaint is dismissed without prejudice.

 

 

 

Kendall Reed, Panelist

Dated: December 12, 2024