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and Mediation Center
AshBritt, Inc. v. Arborturf
Case No. D2005-0657
1. The Parties
The Complainant is AshBritt, Inc., Pompano Beach, Florida, United States of America, represented by Carlton Fields, United States of America.
The Respondent is Arborturf, Lancaster, Ohio, United States of America.
2. The Domain Names and Registrar
The disputed domain names <ashbritt.net> and <ashbritt.org> are
registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2005. On June 23, 2005, the Center transmitted by email to Go Daddy Software request for registrar verification in connection with the domain names at issue. On June 24, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 22, 2005. The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2005.
On August 25, 2005, the Center received a facsimile from a person claiming to be representing the Respondent and alleging that the Center had not properly notified the Respondent of the commencement of the administrative proceeding. The Center replied by e-mail on August 26, 2005.
The Center appointed Kevin C. Trock as the Sole Panelist in this matter on September 5, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel, after examining the case file, is satisfied that the Center has met its obligations under paragraph 2(a) and 4(a) of the Rules.
The Panel issued Administrative Panel Order No. 1
on October 19, 2005, requesting additional information on several issues. The
Complainant provided its supplemental information on November 10, 2005, and
the Respondent provided information on November 11, 2005.
4. Factual Background
The Complainant is AshBritt, Inc., a corporation of the State of Florida having a principal place of business in Pompano Beach, Florida. The Complainant is engaged in the environmental clean-up and restoration business. The Complainant does not hold any trademark registrations. The Complainant operates a website at <ashbritt.com>.
The Respondent is Family, Inc., dba Arboturf Co. Arboturf
is located in Lancaster, Ohio and is engaged in the tree and lawn service business.
The Respondent registered the disputed domain names <ashbritt.org> and
<ashbritt.net> on April 5, 2005.
5. Parties’ Contentions
The Complainant contends that it has continuously used the mark ASHBRITT to identify its services in environmental clean-up and restoration since 1992, and claims that it has marketed and advertised its services using the mark for the past 12 years, including on its website “www.ashbritt.com”. While the Complainant has not claimed ownership of any trademark registrations, it has asserted that the mark ASHBRITT identifies distinctively its business services.
The Complainant contends that the Respondent uses the disputed domain names <ashbritt.org> and <ashbritt.net> to point to a third domain name <assbritt.com> which is not claimed subject matter under this Complaint. The Complainant contends that the Respondent uses a website located at this undisputed domain name to defame the Complainant. The Complainant asks the Panel to consider Respondent’s activities at the undisputed domain name as the basis for transferring the registration of the two disputed domain names.
The Respondent did not file a Response to the Complaint,
but did provide some information in response to Administrative Panel Order No. 1.
Although the Respondent did not file a Response to the Complaint, the Panel
will take into consideration the information the Respondent provided in response
to Administrative Panel Order No. 1 in rendering its decision in this matter.
6. Discussion and Findings
In order to prevail, the Complainant must prove the following three elements: (i) the Respondent’s domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in the domain names; and (iii) the Respondent has registered the domain names and is using them in bad faith. (Policy, paragraph 4(a)).
A. Identical or Confusingly Similar
Although the Complainant does not have any registration for the mark ASHBRITT, the Panel finds that the Complainant has provided sufficient evidence to establish common law rights in the mark through its use since 1992 for environmental clean-up and restoration services. The Panel also finds that that domain names <ashbritt.org> and <ashbritt.net> are identical to the Complainant’s mark ASHBRITT, there being no differences other than the generic top-level domains.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists three, non-exclusive means of demonstrating rights to and legitimate interests in a domain name. They are:
(i) before any notice of the dispute, respondent’s use or preparation to use the domain name or a name corresponding to the domain name is in connection with a bona fide offering of goods and services; or
(ii) respondent has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant asserts that the Respondent does not use the disputed domain names for any bona fide commercial purpose, but rather uses them to point to a third domain name that is not the claimed subject matter of this case, and that the Respondent uses a website located at this undisputed domain name to defame the Complainant.
The Complainant has provided the Panel with copies of the web pages associated with the third undisputed domain name, and claims that the Respondent defames the Complainant on this website by alleging that in connection with a contract with the City of Port St. Lucie for hurricane clean-up, the Complainant conspired with Liberty Mutual to obtain bonding in violation of Florida law; alleges that the Complainant lies and runs bait and switch tactics to defraud subcontractors; and alleges that the Complainant steals from subcontractors.
The Respondent does not deny that it was responsible for the registration of the two disputed domain names and that they point to the allegedly defaming website. Rather, the Respondent takes the position that the website is not defamatory and merely provides information and opinions.
The Panel finds that neither paragraphs 4(c)(i) or (ii) applies to the present dispute. The disputed domain names were registered on April 11, 2005, after a dispute between the parties arose. The Respondent has never been known by the name Ashbritt. Only paragraph 4(c)(iii) appears to have any relevance here.
The Respondent at one time was a subcontractor of the Complainant and the relationship was not satisfactory. A party’s use of a domain name for non-commercial purposes such as identity, criticism and opinion can be a legitimate use. However, the Panel finds that the allegedly defamatory website exceeds the standards necessary for such criticism, especially when viewed in light of the confusing similarity of the disputed domain names with the Complainant’s mark. Accusing the Complainant of conspiring with an insurance company to obtain a bond, running bait and switch operations and stealing from subcontractors are serious allegations that go far beyond what is necessary to provide legitimate identity, criticism and opinion of the Complainant and its operations. Such allegations are not genuine, non-commercial criticism and may indeed be defamatory or act to tarnish the Complainant’s reputation and good-will of the Complainant’s mark. Accordingly, the Panel finds that the Respondent does not have a legitimate interest in the disputed domain names.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered the disputed domain names and is using them in bad faith by diverting traffic from the Complainant’s website to a website that allegedly defames the Complainant.
The Respondent has not denied registering the disputed domain names <ashbritt.net> and <ashbritt.org>. Neither has the Respondent denied that the disputed domain names point to a third undisputed domain name <assbritt.com> that harbors the allegedly defamatory website. Rather, Respondent merely claims that there is no proof that the web pages are defamatory.
Prior to registering the disputed domain names, the Respondent had knowledge of the Complainant, the Complainant’s domain name <ashbritt.com>, the Complainant’s services, and the Complainant’s mark ASHBRITT. Indeed, in September 2004, the Respondent entered into a Subcontractor Agreement with the Complainant for debris removal operations, among other things. The disputed domain names were not registered until April 11, 2005.
Paragraph 4(b) of the Policy sets forth some of the circumstances that may be considered as showing evidence of bad faith registration and use of a domain name. Paragraph 4(b)(iii) states “you have registered the domain name primarily for the purpose of disrupting the business of a competitor”. The Panel believes that the facts of this case fall within the boundaries of this element.
Here, the parties had a business relationship that went sour prior to the Respondent’s
registration of the disputed domain names. The Respondent obviously chose the
disputed domain names because they were identical to the Complainant’s
mark ASHBRITT. The Respondent then used the disputed domain names <ashbritt.net>
and <ashbritt.org> to divert traffic away from the Complainant’s
website, located at <ashbritt.com>, to the Respondent’s website
located at <assbritt.com> where the Respondent posted allegedly defamatory
material about the Complainant. As noted above, the allegations posted to the
Respondent’s website go far beyond what is necessary to provide legitimate,
non-commercial criticism of the Complainant. Rather, the Respondent has accused
the Complainant of engaging in conspiracy, bait and switch and theft. These
allegations, when considered in light of the confusing similarity of the disputed
domain names with the Complainant’s mark, provide sufficient evidence
for the Panel to conclude that the disputed domain names were registered and
are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <ashbritt.net> and <ashbritt.org> be transferred to the Complainant.
Kevin C. Trock
Dated: November 28, 2005