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and Mediation Center
ADMINISTRATIVE PANEL DECISION
ServiceMaster Brands LLC v. Riel Roussopoulos
Case No. D2007 - 0346
1. The Parties
1.1 The Complainants are ServiceMaster Brands LLC, ServiceMaster Consumer Services, LP and The ServiceMaster Company of Memphis, Tennessee, United States of America, represented by Kirkland & Ellis LLP, Chicago, Illinois, United States of America.
1.2 The Respondent is Riel Roussopoulos Vancouver, British Columbia, Canada.
2. The Domain Names and Registrar
The disputed domain names, <servicemaster.info>, <servicemasters.info> and <servicemaster.ws> (the “Domain Names”) are registered with Schlund+Partner AG.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2007. On March 12, 2007, the Center transmitted by email to Schlund+Partner AG a request for registrar verification in connection with the domain names at issue. On March 21, 2007, Schlund+Partner AG 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 contacts for the domain names at issue. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on March 22, 2007. The Center verified that the Complaint together with the amendment to 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”).
3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced April 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 23, 2007. The Response was filed with the Center on April 19, 2007.
3.3 The Center appointed Matthew Harris as sole Panelist in this matter on May 21, 2007. The Panel finds that it was properly constituted. The Panelist 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.
3.4 The Panel, having reviewed the Complaint and the Response (and for the reasons explained later on in this decision), issued a Procedural Order on May 25, 2007, seeking further clarification from the Respondent and extending the period for the decision to June 8, 2007. The Respondent responded to the Procedural Order on May 27, 2007. The Panel exercising its powers under paragraph 10(c) of the Rules further extended the time for delivery of this decision to the Center to June 13, 2007.
4. Factual Background
4.1 The Complainants, (thereinafter referred to for convenience as the “Complainant”) along with their subsidiaries, offer services such as gardening and landscaping, home maintenance, extermination and housekeeping in the United States of America and Canada. They are also the proprietors of the US registered service mark “SERVICEMASTER” and the registrants of the domain name <servicemaster.com>.
4.2 The Respondent is an individual. He registered the <servicemaster.info> and <servicemasters.info> domain names on January 18, 2006. The third domain name, <servicemaster.ws>, was registered over a year later on January 26, 2007.
4.3 At the time that these proceedings were commenced each of the Domain Names linked to a domain name “parking service” and the web pages displayed comprised a mixture of advertisements and/or hyperlinks for various goods and services.
4.4 However, by the time of this decision each of the Domain Names appears to have been linked to a page on the Ning social network service. That page primarily consists of links to various history and museum related websites.
5. Parties’ Contentions
5.1 The Complainant’s factual and legal contentions can be summarised as follows.
Identical or Confusingly Similar
5.2 The Complainant claims to hold several United States’ trademark registrations but provides evidence of only one. That is US registration no. 0782584 for the word SERVICEMASTER in International Class 7 for “maintenance services for cleaning interiors of commercial buildings and private homes and furnishings thereof”. The mark has been used in interstate commerce, since 1954.
5.3 The Complainant has also owned and operated a website from the domain name <servicemaster.com> since 1997 for the purpose of promoting, advertising and marketing its products and services in conjunction with the SERVICEMASTER mark.
5.4 Each of the Domain Names is alleged to be confusingly similar to the Complainant’s trademark. In the case of the <servicemasters.info> mark, the fact that the domain name “merely pluraliz[es]” the mark is said in no way to distinguish it from Complainant’s mark.
5.5 The Complainant then goes on to refer to the fact that the website originally operating from the Domain Names offered access to services such as “plumbing”, “pest control”, “electricians” and “home alarms”. The Respondent does not actually offer such services but obtains “click-through” fees from advertisers through a “domain parking” service. The services advertised are so similar to those that it is said the Complainant has offered since 1954, that visitors to these websites “will necessarily become confused as to the origin, sponsorship, and/or endorsement of the domain[s]”.
Rights or legitimate interests
5.6 The Complainant asserts that because it has demonstrated its rights and legitimate interests to the domain names, by virtue of its lawful trademark, the burden rests with the Respondent to show that he has a right or legitimate interest in the name.
5.7 Further, it is said that the Respondent cannot demonstrate a rights or legitimate interests because:
(a) the Respondent is not and has never been authorised to use the Complainant’s mark;
(b) WHOIS information in respect of the Domain Names does not suggest that the Respondent is “commonly known by the <servicemasters.com> domain name”. If he is commonly known by any domain name, it is that of <djriel.com>, a domain name that the Respondent operates in connection with disc jockeying activities;
(c) there is no evidence of the Respondent’s use of, or demonstrable preparations to use the Domain Names in connection with any bona fide offering of goods or services; and
(d) the Respondent’s use of the Domain Names is not legitimate, non-commercial or fair use. The use of Domain Names to connect to sites that are designed to create “click-through fees” for the Respondent is alleged to show that the Respondent is operating the Domain Names “purely for commercial gain”.
Registered and Used in Bad Faith
5.8 The Complainant contends that information about the Respondent available on the Internet shows that he is a self styled “technology evangelist”. As such and even as an “every day consumer”, the Respondent “should have been aware of the Complainant’s rights and legitimate interests in the SERVICEMASTER trademarks”. In particular:
(a) the Complainant has used its marks in commerce for over 50 years and had operated the <www.servicemaster.com> website since 1997, but the Respondent did not register any of the Domain Names until 2006; and
(b) the Complainant serves customers in the Vancouver, British Columbia area, which is the same area listed as the location of the Respondent in the Respondent’s WHOIS contact information.
5.9 In support of its position, the Respondent relies upon the decision in Mobile Communication Service Inc the Webreg, RN,
WIPO Case No. D2005-1304 which is said to be authority for the proposition that the Respondent cannot “shield [its] conduct by closing [its] eyes to whether domain names [it is] registering are identical or confusingly similar to trade marks”. Further reference is made to the decision in The Wood Soldier LTD Rarenames, Webreg NAF Case No. FA778960, which is said to be authority for the proposition that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”.
5.10 The Complainant further asserts that the Respondent registered and required the Domain Names for the primary purpose of reselling the Domain Names to the Complainant at “an exorbitant price”. In this respect, the Complainant refers to the fact that initially it sought to resolve its dispute with the Respondent anonymously through good faith negotiations. The Complainant contacted the Respondent through an independent agent and offered to buy the <servicemaster.info> and <servicemasters.info> from him. The Respondent initially offered those domain names to the Complainant for US$2,000 and after some negotiation, the Respondent is said to have agreed on January 15, 2007 to accept US$1,500 for both domain names. However, the Respondent is said to have “suddenly changed its mind on January 26, 2007, asking for US$5,000 for these domains”. The <servicemaster.ws> domain name was subsequently offered “for ransom” by the Respondent on January 30, 2007.
5.11 The Respondent’s factual and legal contentions in his Response can be summarised as follows.
5.12 The Respondent claims to be the principal of a “company developing customer relationship management systems applicable to multiple industries”. The Domain Names were said to represent “one of the avenues of marketing that would be taken to introduce the software and online marketing services to new clients”.
5.13 The Respondent claims that he “routinely identifies service and trade related domains and registers them for his own development purposes”. Further he claims that his practice is “to park all the domain names he has registered that are not in active development”. The domain names identified are “based on generic service related key words”. He claims he is approached on a regular basis to sell the domain names to other parties but he has “less than half a dozen times … entered into serious discussions about selling domain names”.
5.14 The Respondent claimed he registered the Domain Names without being aware of the “service master brand”. The intention of the Respondent at the time of registering domain names “was to utilise them … as part of the development of a referral and reputation management system for a wide variety of service related companies”.
5.15 The parking pages used generated “minimal click revenue”. The Respondent claims he has made no more than US$1.81 from all three domains over a 2-year period and produces a printout from his account with Namedrive.com that is said to evidence this. The Respondent claims that the Domain Names were therefore not parked for financial gain but instead because this would “provide statistics on whether the domain name is attracting ‘natural type in’ traffic which [is] part [of] the marketing analysis of the potential of the domain name”.
5.16 The Respondent then proceeded to address the Complainant’s contentions as follows:
Identical or confusingly similar
5.17 The Respondent does not comment upon the Complainant’s trademark, nor upon the issue of similarity between that trademark and the Domain Names. Instead, reference is made (presumably, because the Complainant relies upon a US registered trademark) to the fact that he is a resident of Canada and carries on business in Canada. The Respondent claims that the Complainant has trademarks in Canada related to providing wares and services for interior maintenance and the landscaping of buildings. He claims the parking pages complained of do not to fall within the scope of these Canadian registrations. Further, and in any event, the Respondent had now removed those pages all together.
5.18 The Respondent also denies that his pages were in any way similar to or confusing to the pages on the Complainant’s website. He claims they do not contain advertising that is competitive to the Complainant and do not “look or feel like the Complainant’s current style used on its websites”.
Rights or legitimate interests
5.19 The Respondent asserts that he did not register the Domain Names with the intent of reselling them. They were purchased “as part of the development of service related businesses in fields unrelated to the Complainant”. He claims he routinely purchases names in “specific industry verticals such as SEO, Lighting and ‘Portals’“. The Respondent states that:
“After identifying the [Domain Names] as names with a generic service related ben[t], the names were purchased and parked. They were subsequently renewed and parked again with the intention of having those domain names become part of a larger service company related plan to offer software to various service verticals”.
Registered and Used in Bad Faith
5.20 Bad faith is denied. The Respondent claims that the “primary purpose for registering the domain names in question was to add to the many services and trade related domain names that the Respondent has registered for its own development purposes”.
5.21 The Respondent denies that he is a competitor of the Complainant. He also denies that he has “intentionally use[d] the [Domain Names] in competition with the Complainant’s wares and services”. The parking page of which complaint is made is said to have been “a generic page generated by a third party”.
5.22 The Respondent claims that only after the Complainant’s agent started to negotiate with him, did he “undertake some background investigation at which time he discovered the registered trademarks in the Canadian Intellectual Property Registry”. The Respondent claims that he decided not to sell the Domain Name after a purchase price had been reached because the Complainant’s agent failed, after suitable warning, to make the agreed payment.
5.23 The Respondent further asserts that these proceedings are a case of attempted reverse domain name hijacking.
6. Discussion and Findings
6.1 Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(i) the domain name is 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 respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
6.2 The Panel addresses each of these elements in turn.
A. Identical or Confusingly Similar
6.3 This aspect of the case is somewhat more straightforward than the submissions of either of the parties would suggest. The Panel has little difficulty accepting on the evidence put before it that the Complainant is the owner of a US registered trademark for the word “SERVICEMASTER”. Therefore, ignoring the suffixes “.ws” and “.info” that appear in the Domain Names, two of the Domain Names are identical to the trademark relied upon. In the case of the third Domain Name <servicemasters.info>, the addition of the “s” is of little significance. The Panel agrees that in this case the domain name is confusingly similar to the trademark relied upon. In the circumstances, the Panel finds that the Complainant satisfies paragraph 4(a)(i) of the Policy.
6.4 It is not necessary (as the Complainant appears to suggest should be done) to go on to consider whether or not there is confusing similarity between the Complainant’s trademark and the material on the website originally operating from the Domain Names. It is worth noting
paragraph 1.2 of the “WIPO overview of WIPO panel views on selected UDRP questions”. This states as follows:
“The content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity. This is because trademark holders often suffer from “initial interest confusion”, where a potential visitor does not immediately reach their site after typing in a confusingly similar domain name, and is then exposed to offensive or commercial content. The test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion”.
6.5 The Respondent’s reference to the scope of the Complainant’s Canadian, as opposed to US, registered trademarks is similarly misconceived. All a complainant need do under the Policy is to identify trademark rights recognised in a particular jurisdiction in respect of which the domain name is said to be identical or confusingly similar. That is not to say the fact that a Complainant does or does not have trademark rights in the jurisdiction in which a Respondent is located, is necessarily irrelevant in UDRP proceedings. There may be cases where that fact is important in the assessment of the existence of rights or legitimate interest and/or registration and use in bad faith. However, it is not relevant in a case such as this when assessing whether a complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.6 The Complainant contends in the Complaint that because it has demonstrated its right and interest in the Domain Name, by virtue of its lawful trademarks, the burden rests with the Respondent to show that he has a right or legitimate interest in the Domain Name. This is simply not correct. If it were, a complainant would need to do nothing more under this heading than refer to his registered trademark.
6.7 However, the Complainant then goes on to make a series of assertions essentially to the effect that the Respondent does not have registered rights, is not authorised by the Complainant and that none of the circumstances set out in paragraph 4(c) of the Policy are satisfied. Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances that if shown by a respondent will demonstrate rights or a legitimate interest.
6.8 What the Complainant has done here is a common approach in complaints. Whilst, a complainant bears the burden of proof of each element of paragraph 4(a) of the Policy, the concern is that in the case of the requirement of no legitimate rights or interests, it is essentially being asked to prove a negative. Therefore, by making the assertions described, a complainant hopes to make out a prima facie case under this heading so that the burden of proof will then effectively pass to the respondent.
6.9 However, the Respondent does in this case provide an explanation as to why he registered the Domain Names. He claims to have registered Domain Names comprising a combination of “generic” words for use in connection with a business to which those words relate. This is said to be done without any knowledge of the Complainant’s interest in the SERVICEMASTER name, and without any intention to trade off the Complainant’s goodwill in that name. In essence, therefore, whether or not the Respondent has a legitimate right of interest in this case depends upon whether the Panel accepts the Respondent’s assertions in this respect. As the Panel explains in detail under the heading Bad Faith below, it does not. In the circumstances, the Panel finds that the Complainant has made out its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.10 There is a fundamental dispute of fact between the parties that goes to the heart of whether or not the registration and use of the Domain Names was in bad faith. That is, to what extent the Respondent was aware of the Complainant and its business at the time that it registered the Domain Names.
6.11 Since at one point the Complainant alludes to constructive rather than actual knowledge, the Panel wishes to make it clear that in the circumstances of this case it is actual and not constructive knowledge that is key. It now seems reasonably clear from numerous decisions that the doctrine of constructive notice does not apply where, as here, the parties to proceedings are not both from the USA (see, for example, Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan,
WIPO Case No. D2004-0537 and Sallie Mae, Inc. v. Chen Huang,
WIPO Case No. D2004-0880). Further, the recent decision of the three person panel in Advanced Drivers Education Products and Training, Inc v. MDNH, Inc. (Marchex), NAF Case Number: FA0509000567039 would suggest that even where both parties are from the USA, “constructive notice (of trademark rights) is not enough under the Policy” to satisfy the requirement of bad faith. The panel in that case went on to say that:
“The Policy makes no mention of constructive notice being enough to satisfy this requirement…[and]…if Complainant’s position were adopted, it would essentially establish a per se rule of bad faith any time a domain name is identical or similar to a previously-registered trademark, since constructive notice could be found in every such case. Such a result would be inconsistent with both the letter and the spirit of the policy, which requires actual bad faith”.
6.12 The Panel accepts that there are some cases that suggest that in unusual circumstances a limited version of the doctrine of constructive notice may have a role to play. These cases include Red Nacional De Los Ferrocarriles Espanoles v. Ox90,
WIPO Case No. D 2001-0981, Sibyl Avery Jackson v. Jan Teluch,
WIPO Case No. D2002-1180 and Mobile Communication Service Inc. v. Webreg, RN,
WIPO Case No. D2005-1304). The Mobile Communication Service Inc. v. Webreg, RN,
WIPO Case No. D2005-1304 decision is actually cited by the Complainant. However, these cases are controversial (see the decision in Promatic International Limited v. Name Administration Inc.,
WIPO Case No. D2006-0673). More importantly, for present purposes, the unusual circumstances that existed in these cases do not exist in the case now before the Panel.
6.13 The Respondent’s case on actual knowledge is quite clear. He maintains that he was unaware of the existence of the Complainant at the time of registration. Ultimately, the Panel is unable to accept that this assertion is correct. To explain why it is necessary to return to the Respondent’s own explanation as to why he registered the Domain Names.
6.14 The Respondent claims that the Domain Names are generic in nature. He also appears to accept that he has registered well in excess of 300 domain names (referring in support of his arguments to a list of those domain names that was appended to the Complaint). However, he does not claim to be a trader in generic domain names and maintains that all of these Domain Names are registered for his “own development purposes”.
6.15 However, in the case of the Domain Names the Response is extremely vague as to the goods and services for which he intends to use the Domain Names. Reference is made to use for marketing “customer relationship management systems” and software. Further, the Response states that the Domain Names will be used “as part of the development of a referral and reputation management system”. However, exactly how the Domain Names will be used, and what form the “customer relationship management” and “referral and reputation management” systems will take is not described.
6.16 Nevertheless the Respondent further claims that the Domain Names had been registered as part of a strategy that included the registration of such domain names as “find-cleaners.com” and “wearepainters.com”. Therefore, it appears that the Respondent’s case is that he intends to use the Domain Names in connection with some form of service or website connected with some form of property maintenance.
6.17 However, there are the following difficulties with the Respondents description of his intentions:
(a) The Complainant contends (and the Respondent does not deny) that it has used the SERVICEMASTER name for over 50 years in connection with property maintenance services. It serves customers in the area where the Respondent resides. Without further explanation it seems unlikely that if the Respondent did intend to offer services in some way related to or connected with property maintenance, that it would not have been aware of the Complainant.
(b) Whilst two of the Domain Names were registered nearly a year and a half ago the domain names have not been used yet nor has the Respondent offered up any evidence of preparations to use the Domain Names in connection with these goods or services.
(c) Whilst the Domain Names were said to have been registered as part of a strategy that included registering <find-cleaners.com> and <wearepainters.com>, the Domain Names are not quite of the same character. For example, the domain names <find-cleaners.com> and <wearepainters.com>, do relatively clearly and unequivocally describe specific services. In contrast while the words “service” and “master” when used together could be said to be descriptive, the description is somewhat more abstract, allusive and ambiguous. The Respondent does not appear to have registered any other similarly allusive combinations of words as a domain name (or for that matter any other domain name that incorporates the word “service”).
(d) The Complainant contends (and the Respondent does not deny) that the Respondent is “a sophisticated Internet user”. Material appended to the Complaint in the form of printouts from the Respondent’s own social networking profile, tends to support that statement. That the Respondent has registered well in excess of 300 domain names is further evidence of this fact.
Given this fact and given that the Respondent states that he thought that “SERVICEMASTER” and “SERVICEMASTERS” were good names for use with his intended business venture, it seems likely that he would have checked whether the <servicemaster.com> was available, and if he had done so is likely to have discovered the Complainant’s interest in that domain.
Would not an individual of the sophistication of the Respondent have known that a “.com” domain name was likely to attract more traffic than .info and .ws equivalents? Admittedly, the Respondent has registered many different types of domain names but the vast majority of theses are “.com”s. It is also clear that in other cases where he has registered a “.info” Domain Name he has registered the “.com” equivalent. Examples include the series <getoffgas.com>, <getoffgas.biz>, <getoffgas.info> and <getoffgas.net>, and the series <ourstrata.com>, <ourstrata.ca>, <ourstrata.info>, <ourstrata.net>, and <ourstrata.org>.
The Panel is not suggesting that the Respondent was under an obligation to check the “.com” equivalent. It is simply that as a matter of fact in this case, it would have been rather odd if he did not do so.
6.18 Perhaps none of these factors either alone or together suggest that the Respondent must have known that the Complainant’s interest in the name. However, there is one other important factor in this case that has a significant impact on the weight to be given to the Respondent’s assertion that he did not know about the Complainant’s business.
6.19 The Domain Names were not all registered at the same time. WHOIS documentation exhibited to the Complaint makes it clear that whilst the <servicemaster.info> and <servicemasters.info> domain names were registered in January 2007, the <servicemaster.ws> domain name was not registered until January 26, 2007. The significance of this fact is that by January 26, 2007, negotiations between the Complainant’s agent and the Respondent in relation to the purchase of the first two domain names had been going on for at least a month. Indeed, it would appear from the email correspondence that on or about the same day the Respondent sent the Complainant’s agent an email stating that he was “thinking a little more about the deal”. He then goes on to state:
“We both know that Service Master is a big franchise brand with their Merry Maids and Terminix divisions amongst others. If they are your clients, then I’m sure they can afford considerably more than $1,500 to secure this property, and if they are NOT your client, then may be I should go after them directly and see if I can get a better deal from them directly or better yet their competitors”.
Then in an email a few days later to the Complainant’s agent, the Respondent asks:
“are they interested in servicemaster.ws? I own it also”.
6.20 The only credible explanation of these events and this email is that the <servicemaster.ws> domain name was registered with a view to sale either to the Complainant or to the Complainant’s competitors. Therefore, the Respondent’s claims that he did not register the Domain Names with the intention of reselling them are at least insofar as this third domain name are concerned, demonstrably false. It also suggests that the Respondent at all times knew about the Complainant’s business in some detail.
6.21 Of course, the Panel accepts that it is possible that the Respondent registered the <servicemaster.info>, <servicemasters.info> domain names with a quite different purpose in mind, and only gained a detailed knowledge of the Complainant’s business at some subsequent time prior to the registration of the third domain name. However, the fact that the Respondent has not been entirely candid in his description of events in relation to the <servicemaster.ws> domain name, meant that the Panel was disinclined to give the Respondent the benefit of the doubt on this issue.
6.22 There were also other inconsistencies between the Response and the evidence exhibited in the Complaint. In particular:
(a) The Respondent claimed that he had only received $1.80 in click-through fees for the Domain Names in two years and yet in an email to the Complainant’s agent in January 2007 he had in responded to an offer of $100 had replied that he was:
“not interested at that price. adsense makes me more than that per year now on that.”
(b) In a latter email the Respondent stated as follows:
“If you can’t do $1500 you can talk to me again in a few months, I am doing a project right now that plays into this name and I’m pretty sure that my client will end up buying it along with a number of other names that relate to contracting and service providers”
However, no “client” was claimed or mentioned in the Response
6.23 Perhaps these statements in January 2007, can be explained away as “exaggerations” in the context of negotiations. However, the point is that they show that the Respondent was quite willing to misrepresent the truth if he though that there was some advantage to be gained by it. This and the demonstrably false statement in the Response as to why he registered the third Domain Name inevitably cast a general shadow of doubt upon the veracity of other assertions to be found in the Response.
6.24 In the circumstances, the Panel formed the view on reading the papers initially filed in these proceedings that the Complainant had succeeded in showing on the balance of probabilities that contrary to the Respondent’s assertions, the Respondent was also aware of the Complainant’s business at the time the first two Domain Names were registered. However, many of the points and arguments set out above had not been expressly put to the Respondent in the Complaint. With this in mind and taking into account the requirement of procedural fairness, the Panel issued the Procedural Order, a copy of which is at Annex 1 to this Decision.
6.25 The Respondent filed a submission in response to the Procedural Order on May 27, 2007. Although, the further submission did not append any supporting evidence, it did provide a more detailed description of how it was that the Respondent came to register the Domain Names. In short, the Respondent maintained that he had originally been engaged in a business venture associated with the installation of lights. The website for that business included a piece of software that provided costs estimates to those who wanted to use his services. That business venture had been successful and he had registered a number of domain names to “drive traffic” to a website operating from the domain name <weputuplights.com>. From this the Respondent started to register other service related domain names as part of a strategy to expand beyond physical services and into marketing and referral services, i.e. “matching up clients with installers - instead of doing the installing himself”.
6.26 A further important part of the Respondent’s story emerged from the description given. The Respondent stated that he had “identified “www.servicemagic.com” as a comparable model to [what] he was building as it provide[d] a network of contractors with leads around North America”. The Respondent asserted that:
“The ‘servicemagic’ name was an inspiration for the SERVICEMASTER domain names registered by the Respondent as part of the planning phase for the expansion [of his business]”.
6.27 It may well be that the Respondent’s description of an intended expansion of a pre-existing business is truthful. However, the reference to the “servicemagic.com” business suggests if anything that the Panel’s initial conclusions here were correct. As the Respondent describes, Servicemaster provides a network of contractors around North American. It is clear from a brief visit to the “www.servicemagic.com” website that the contractors in question are property maintenance related. Given the fact that the Respondent’s was sufficiently sophisticated to be aware of the “servicemagic.com” services business, it strikes the Panel as even more implausible that he was unaware of the Complainant’s business.
6.28 On the question of when the Respondent claims to have known about the Complainant’s business, the answer given was that he did so after having been contacted by the Complainant’s agent and:
“Once the discussions became more serious and the offer for the names increased to more than: $1,000”
However, the emails that record that negotiation show that it was the Respondent who first started mentioning figures of that order asking for US$2,000 for the Domain Names.
6.29 Further, the explanation proffered by the Respondent as to why he did not attempt to register the <servicemaster.com> is also far from convincing and in part contradictory. He states that:
“throughout the process of registering the SERVICEMASTER domain names, [he] was not interested in what was registered as it was not available.”
The implication therefore, is that he accepts that he at least checked the availability of these domain names. However, later in his supplemental Response he states that:
“he was only looking at .info names as part of a free offer by 1&1 and did not check the .coms as they were simply not the focus of the purchasing strategy”.
6.30 In short, nothing in the further submission led the Panel to change its view that on the balance of probabilities, the Respondent was aware of the Complainant’s interest in the SERVICEMASTER name at the time of registration.
6.31 Given that knowledge, why then did the Respondent register the Domain Names? The Complainant’s primary contention is that the Domain Names were purchased with a view to selling them to the Complainant for valuable consideration in excess of documented out-of pocket expenses. Such activity is listed in paragraph 4(b) of the Policy as an example of bad faith registration and use.
6.32 In support of that contention, the Complainant refers to the negotiations in January 2007. For the reasons that the Panel has already described above, it is clear beyond any reasonable doubt that the Respondent had registered the <servicemaster.ws> domain name with a view to selling it to the Complainant (or one of its competitors). Indeed, the Respondent all but admitted this was case in his supplemental submission by stating as follows:
“When the Respondent was first contacted about purchasing servicemaster.info (not servicemasters.info which was offered into the deal by the Respondent after the initial request to purchaser servicemaster.info), the Respondent identified other domain extensions that were available. The Respondent identified the .ws as being available, registered it and added it to the list of names that were being offered for purchased [sic]. The purchase price being negotiated was not increased due to the additional domain names but added as a “sweetner to the deal”.
6.33 It is therefore quite possible that the Respondent also initially registered the other two domain names a year earlier with this in mind. The fact that the Respondent was prepared to engage in such activity in January 2007 suggests that he would not have been above doing so in January 2006.
6.34 Alternatively, the Complainant seems to be relying upon the parking of the domain names with a domain name parking service as further evidence of bad faith registration. It is certainly the case that the registration of a domain name, with a view to obtaining revenues from domain name parking that are likely to arise because of initial interest confusion on the part of the public between that domain name and a name in which trademark rights exists, can constitute bad faith registration and use. A recent example of such a case is the decision of the three person Panel in Express-Scrips Inc v. Windgatherer Investments Limited,
WIPO Case No. D2007-0267.
6.35 The Panel accepts that this was at least part of the motivation of the Respondent’s actions in this case. The Respondent’s contention in this respect is that he only gained revenue of US$1.81 from the domains over a 2-year period. A Namedrive.com web page printout is supplied as corroborative evidence in this respect (and indeed is the only corroborative evidence provided by the Respondent in respect of any aspect of this case). It is very difficult to understand this document but it is possible to read this as supporting this contention. However, even if this is correct, it makes no difference.
6.36 The relevant provision in the Policy here is to be found in paragraph 4(b)(iv). It gives as another example of circumstances evidencing registration and use in bad faith:
“[use of the domain name whereby the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [his] website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark-up as to the source, sponsorship, affiliation, or endorsement of [his] website or location or of a product or service on [his] website or location”.
6.37 What is important is the Respondent’s “attempt” to attract for commercial gain. Whether or not he actually succeeded in doing so and the exact extent of the commercial gain achieved is not important.
6.38 Further, once it is accepted that the Respondent was aware of the Complainant’s interest in the SERVICEMASTER name prior to registration of the Domain Names, then bad faith registration and use is established solely based on the Respondent’s own explanation of events. According to the Respondent, his intention was “to use the Domain Names to drive traffic” to his existing or contemplated business. If the Respondent knew of the Complainant’s use of the SERVICEMASTER name, then he would also have known that in large part traffic driven to his site would have taken the form of those seeking the Complainant’s business. Such activity falls within paragraph 4(b)(iv) of the Policy.
6.39 In the circumstances, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy in respect of all three of the Domain Names.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <servicemaster.info>, <servicemasters.info> and <servicemaster.ws> be transferred to the Complainant.
Matthew S. Harris