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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Mamar, Inc. v. Order Your Domains

Case No. D2005-1163

 

1. The Parties

The Complainant is Mamar, Inc., Cincinnati, Ohio, United States of America.

The Respondent is Order Your Domains, Eastanolle, Georgia, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <homerepairconnection.com> (the “Domain Name”) is registered with BulkRegister, LLC (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2005. On November 9, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 10, 2005, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing registrant contact details for Respondent. The Center verified that the 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 November 18, 2005. In accordance with the Rules, paragraph 5, the due date for a Response was December 8, 2005. The Respondent filed a Response with the Center on December 8, 2005.

The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on January 5, 2006. 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.

 

4. Factual Background

The Complainant is engaged in providing home repair, remodeling and general handyman services under the service mark HOME REPAIR CONNECTION (the “Mark”).

Respondent registered the Domain Name on July 23, 2005.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that:

It has used the mark in connection with its business of providing home repair, remodeling, and general handyman services since 1993.

The Mark has been used in Complainant’s advertising throughout the past 12 years, and Complainant has thereby acquired common law trademark rights in the Mark.

Complainant holds a valid registration of the Mark with the United States Patent and Trademark Office.

The Domain Name is identical to the Mark, Respondent has no right or legitimate interests in the Domain Name, and Respondent has registered and used the Domain Name in bad faith.

Complainant requests that the Domain Name be transferred to Complainant.

B. Respondent

Respondent contends that:

The rights Complainant has in the Mark are weak.

Respondent’s use of the Domain Name by way of “parking” in order to generate revenue is a typical and legitimate use.

Respondent was unaware of Complainant’s rights to the Mark when it registered the Domain Name.

Internet users are not confused or misleadingly diverted to Respondent’s website by Respondent’s use of the Domain Name.

Respondent’s owner also owns, as his main business, a construction business, incorporated in Georgia, with a solid history of actual in-house construction.

Respondent, prior to Complainant’s filing of the instant complaint, engaged in research in connection with preparing to use the Domain Name in connection with an offering of construction services.

Complainant, in bringing this Complaint, intends to reassert the strength of the Mark prior to competing with parties in other states, wherein such parties own rights to the name “Home Repair Connection.”

Respondent requests that the complaint in this matter be denied.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

To satisfy this element Complainant must establish it has rights to a trade or service mark, and that the disputed domain names are identical or confusingly similar to such marks. See Policy paragraph 4(a)(i). Under the Policy, the test of confusing similarity is “confined to a consideration of the disputed domain name and the trademark.” America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (February 22, 2001).

Complainant has shown that, since 1995, it has owned a registration for the service mark HOME REPAIR CONNECTION, and Respondent has admitted to Complainant’s ownership of service mark rights in this regard.

The Domain Name at issue incorporates Complainant’s service mark in its entirety. Under paragraph 4(a)(i), “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy. . . .” Oki Data Americas, Inc. v. Asdinc.com, WIPO Case No. D2001-0903 (November 6, 2001). Respondent does not dispute that the Domain Name is identical or confusingly similar to the Mark.

The Panel thus finds the Domain Name to be confusingly similar to Complainant’s Mark, and that Complainant has satisfied its burden of proof under paragraph 4(a)(i).

B. Rights or Legitimate Interest

B.1 Applicable Standard

To satisfy this element Complainant must establish that Respondent has no rights or legitimate interests with respect to the Domain Name.

Although the ultimate burden of proof on this element is on the Complainant, previous panels have recognized that this burden is a shifting one, and that once a complainant has made a prima facie showing in this regard the burden is then on respondent to rebut such showing. See John Swire & Sons Limited v. David Huang, WIPO Case No. D2000-1106 (December 5, 2000); CIMcities, LLC v. John Zuccarini D/B/A/ Cupcake Patrol, WIPO Case No. D2001-0491 (May 31, 2001).

Indeed, despite placing the ultimate burden on the complainant, the Policy provides a non-exhaustive list of circumstances which “if found by the Panel to be proved. . . shall demonstrate [a respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii).” Policy paragraph 4(c).

Tracking the circumstances listed in paragraph 4(c) of the Policy, Complainant in the instant matter argues that:

(i) Respondent’s use of the Domain Name to redirect an internet user to a DomainSponser.com generated website containing nothing more than links to other websites is not use in connection with a bona fide offering of goods and services;

(ii) Respondent’s website is devoid of any indication that Respondent is commonly known by the Domain Name; and

(iii) Respondent, by participating in a revenue program whereby it receives a referral fee for redirecting internet users to other websites, is not making a noncommercial or fair use of the Domain Name without intent for commercial gain, to misleadingly divert consumers, or to tarnish the mark at issue.

B.2 Discussion

(i) Respondent Does Not Use the Domain Name in Connection with a Bona Fide Offering of Goods and Services

With respect to the first factor, previous panels have held that use of a domain name that merely offers links to other websites is not a bona fide offering of goods and services pursuant to the Policy 4(c)(i). See e.g., Southern Communications Services, Inc. d/b/a Southern LINC v. Henry Chan, WIPO Case No. D2004-0214 (May 10, 2004). Complainant has shown that the Domain Name is used by Respondent to direct internet users to a webpage that contains only (1) links to other internet web pages, and (2) an offer to “Inquire about this domain.”

The Panel thus holds that Complainant has made a sufficient showing that Respondent’s use of the Domain Name is not in connection with a bona fide offering of goods or services.

(ii) Respondent is Not Commonly Known by the Domain Name

That Respondent is not commonly known by the Domain Names is sufficiently established by the lack of any bone fide offering of goods or services in connection with the Domain Name, and by the content of Respondent’s website at “www.orderyourdomains.com” which indicates that the entity that holds the registration for the Domain Name is engaged in offering “wholesale domain services” and is known by the name Order Your Domains.

The Panel thus holds that Complainant has made a sufficient showing that Respondent is not commonly known by the Domain Names.

(iii) Respondent is Not Making a Noncommercial or Fair Use of the Domain Name Without Intent for Commercial Gain

Complainant has shown that Respondent’s use of the Domain Name directs internet users to a DomainSponser.com generated web page containing links to other web pages, and that DomainSponser.com is a revenue program that generates income to domain holders for their “parked” domains.

The Panel thus holds that Complainant has made a sufficient showing that Respondent is not making a noncommercial or fair use of the Domain Name without intent for commercial gain.

Accordingly, the Panel holds that by virtue of (i) through (iii) above Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the Domain Names, and that the burden properly shifts to Respondent to rebut such showing.

(iv) Respondent’s Failure to Rebut Complainant’s Prima Facie Showing

In its Response on this issue, Respondent argues: (a) that such “parking” of a domain name is typical; and (b) that Respondent had engaged in research with respect to obtaining an occupational license as a contractor under an emergency ordinance in connection with the public crisis arising from hurricane Katrina.

Under the facts of the instant matter, Respondent’s positions are insufficient to rebut Complainant’s showing that Respondent lacks rights or legitimate interests in the Domain Name. That Respondent considers its use of the Domain Name to be typical does nothing to establish such use as a bona fide offering of goods and services under the Policy. Separately, Respondent has offered nothing to support its implied assertion that its inquiry concerning contractor licensing under an emergency ordinance enacted in connection with hurricane Katrina bore any relation to its use of the Domain Name. Under such circumstances, Respondent’s offering of goods or services cannot be deemed bona fide under paragraph 4(c)(i) of the Policy.

Respondent does not dispute that it is not commonly known by the Domain Name and does not assert that its use of the Domain Name is a noncommercial or fair use.

The Panel accordingly finds that Complainant has established Respondent’s lack of rights or legitimate interests in respect of the Domain Name, and that Complainant has thus satisfied its burden of proof under paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Under paragraph 4(b)(i) of the Policy, registration and use in bad faith is properly evidenced by circumstances indicating the registrant has registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant or its competitor for valuable consideration in excess of costs related to the domain name. Policy paragraph 4(b)(i). Here, Respondent’s use of the Domain Name is limited to directing internet users to a web page containing revenue generating links to other web pages offering home repair services. Additionally, such web page included a link inviting the public to “Inquire about this domain.” The Panel finds such use to be primarily a rental to the Complainant’s competitors, and/or a thinly veiled solicitation of offers to purchase the Domain Name, and thus a bad faith registration and use under paragraph 4(b)(i) of the Policy.

Respondent’s relevant arguments against a finding of bad faith registration and use lie chiefly in its assertions that the owner of Order Your Domains also owns, as its main company, a construction business, incorporated in the State of Georgia, with a solid history of actual in-house construction. Even assuming arguendo that Respondent’s relevant exhibits established such assertions as fact, the Domain Name was not registered in the name of the alleged construction business, rather it is registered in the name of Order Your Domains, a self described wholesale domain services company. Respondent’s arguments in this regard, therefore, are insufficient to overcome the evidence indicating bad faith registration and use pursuant to paragraph 4(b)(i) of the Policy. The Panel accordingly finds that Complainant has established Respondent’s bad faith registration and use of the Domain Name and has thus satisfied its burden of proof under paragraph 4(a)(iii).

 

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <homerepairconnection.com> be transferred to the Complainant.


Maxim H. Waldbaum
Sole Panelist

Dated: January 19, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1163.html

 

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