WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rug Doctor L.P. v. Barry Bourdage
Case No. DTV2003-0002
1. The Parties
The Complainant in this proceeding is Rug Doctor L.P., of Plano, Texas, United States of America. The Complainant is represented by Ms. Caroline G. Chicoine of the firm Thompson Coburn LLP, of Louis, Missouri, United States of America.
The Respondent in this proceeding is Mr. Barry Bourdage, president of TechPro, Inc., Geneva, Illinois, United States of America. The Respondent is represented by Mr. Steven Dobrofsky, of Pompano Beach, Florida, United States of America.
The Panel would like to clarify at the outset of this proceeding that the Respondent set forth above is deemed the legal owner of the domain name at issue. This is necessary because the Respondent contends in his Response that he has been acting solely as the agent of a third party, namely Ms. Benitta Burke, in connection with the registration and use of the domain name at issue. Another Panel has stated that: "The register must be taken as reflecting the correct identity of the registrant of a domain name. There can be no room for a bare trustee or a nominee or an agent holding on behalf of a beneficiary or principal, so far as third parties are concerned. Like shipping and land registers operating in many common law jurisdictions under the "Torrens System," the register must be taken at its face value." Gloria-Werke H. Schulte-Frankenfeld GmbH & Co. v. Internet Development Corporation and Gloria MacKenzie, WIPO Case No. D2002-0056 (April 26, 2002). This Panel agrees with this assessment.
2. The Domain Name and Registrar
The disputed domain name is <rugdoctor.tv> (the "Domain Name"). The current registrar of the Domain Name is The .tv Corporation International, located at 10 Universal City Plaza, 10th Floor, Universal City, CA 91608, United States of America (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 21, 2003. On February 24, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 28, 2003, the Registrar 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 March 3, 2003. 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").
In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and the amendment to the Complaint, and the proceedings commenced on March 7, 2003. In accordance with the Rules, Paragraph 5(a), the due date for the Response was March 27, 2003. The Response was filed with the Center on March 26, 2003.
The Center appointed Mr. Matthew D. Powers as the sole panelist in this matter on April 10, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and the Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.
The Panel reviewed the Complaint and the Response and determined that there was a need for additional information from the parties in order to properly conduct the proceeding. Thus, pursuant to the Rules, Paragraphs 10(a), 10(c) and 12, the Panel issued an interim order on April 24, 2003 (the "Order"), that required the parties to submit additional information to the Panel and that extended the due date of this final decision. In satisfaction of this Order, the Complainant filed a sworn affidavit with the Center on May 2, 2003, and the Respondent filed a response to the Complainantís submission on May 4, 2003.
The Panel has noted the Respondentís objection in its submission of May 4, 2003, related to the Complainantís failure to provide copies of all submissions to the Respondentís authorized representative in this case. Pursuant to the Rules, Paragraph 5(b)(ii), the Respondent identified an authorized representative in Paragraph 21 of its Response. Thereafter, the Rules, Paragraphs 2(b) and 5(b)(iii), require the Complainant to copy the Respondentís designated representative with all communications. A procedural failing of this nature by a party may severely prejudice the other partyís ability to provide timely communications with the Center and the Panel. In this case, although the Panel finds that the Complainant failed to provide the required service of communications with the Respondentís authorized representative, the Respondent was able to provide a timely response. As such, the Panel has decided to excuse the Complainantís procedural error.
4. Factual Background
The Complainant is a company that manufactures, sells and provides services related to carpet cleaning machines and products. The Complainant began using the mark "RUG DOCTOR" in connection with carpet cleaning machines and products in 1972, and, since that time, the Complainant has expanded its business throughout the United States and to over twenty other countries. Complaint, Annex F. The Complainant is the owner of eleven federal trademark and service mark registrations incorporating the mark, including Trademark Registration No. 973,037, dated November 13, 1973, for "RUG DOCTOR" in connection with "steam cleaning compounds for use in cleaning rugs, carpets and the like," Trademark Registration No. 973,354, dated November 20, 1973, for "RUG DOCTOR" in connection with "machines for extracting dirt and foreign matter from rugs, carpets and the like," and Service Mark Registration No. 2,536, 671, dated February 5, 2002, for "RUG DOCTOR" in connection with the "rental of cleaning machines for removal of foreign matter from rugs, carpeting, upholstery, floors, ceilings and walls." Complaint, Annex G.
The Respondent is president of a company called TechPro, Inc., that was established in 1987, and is currently based in Geneva, Illinois. TechPro provides computer networking solutions and services, including hosting services. Complaint, Annex K. The Respondent registered the Domain Name with the Registrar on November 26, 2000. Complaint, Annex A.
There is no direct relationship between the parties. The Respondent, however, acknowledges a relationship between the Complainant and the Respondentís father, Mr. Robert Bourdage (a/k/a "Bob" Bourdage). This relationship arose out of a licensing agreement dated November 15, 1982, between Complainant and Mr. Robert Bourdage, whereby his company, Bobco Company, was licensed to rent Complainantís carpet cleaning machines and products in various counties in Illinois. Complaint, Annex M. The Respondent states that his father no longer operates a "Rug Doctor" rental business under license from the Complainant.
5. Partiesí Contentions
Complainant contends that the Domain Name registered by the Respondent is confusingly similar to various trademarks and service marks that have been used by the Complainant in connection with its business for over thirty years.
Complainant also contends that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant argues that the Respondentís business focuses on computer networking, and neither the Respondent nor its business has a license to use Complainantís trademarks or service marks. The Complainant further contends that the Respondent has never used the Domain Name in connection with an active website and that the Respondentís only interest in the Domain Name is to sell it for a profit to the trademark owner.
Finally, the Complainant contends that the Respondent has registered and used the Domain Name in bad faith. The Complainant argues that the only plausible reason for registering the Domain Name was for the purpose of selling, renting or otherwise transferring the Domain Name registration to the Complainant or to a competitor of the Complainant for consideration in excess of the Respondentís out-of-pocket costs directly related to the Domain Name. The Complainant asserts that the Respondent, in fact, did offer to sell the Domain Name to Ms. Caroline Chicoine, the Complainantís attorney, for the amount of $5,000.
The Respondent denies the Complainantís claims and specifically contends that the Respondent is only acting as the administrative and technical contact on the Domain Name on behalf of a third party, namely Ms. Benitta Burke. The Respondent states that because part of its business involves the administration of business and individual email, Ms. Burke hired the Respondent to obtain the Domain Name in order for Ms. Burke to use it to communicate non-commercial and personal email under her nicknames "Bob" and "Rugdoctor," nicknames that she has been known by since the early 1980s.
The Respondent also denies that it attempted to sell the Domain Name to Ms. Chicoine for $5,000. Instead, the Respondent asserts that Ms. Chicoine offered to purchase the Domain Name from the Respondent and that the Respondent explained to Ms. Chicoine that he had no authority to do so because the Domain Name is the property of Ms. Burke.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following:
(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 legitimate interest 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
With its numerous federal registrations extending back some thirty years, the Complainant has demonstrated clear rights in the trademark and service mark "RUG DOCTOR." The Domain Name registered to the Respondent is exactly the same as many of the Complainantís trademarks and service marks, apart from the addition of the required top level domain designation ".tv" and the deletion of the space between the terms "rug" and "doctor" as necessitated by the addressing limitations of the Internet. Given the prior business relationship between the Complainant and the Respondentís father, Mr. Robert Bourdage, it is fair to infer that the Respondent was aware of the Complainantís use of the mark "Rug Doctor" before the Respondent registered the Domain Name. Therefore, this Panel finds that the Domain Name and the Complainantís trademarks and service marks are identical or confusingly similar and that the Complainant has met the requirements of Paragraph 4(a)(i) of the Policy.
B. Respondentís Legitimate Interest
Paragraph 4(c) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of the evidence, shall demonstrate the Respondentís rights or legitimate interests to the Domain Name for the purposes of Paragraph 4(a)(ii):
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the Domain Name, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
To support its contention that the Respondent has no legitimate interest in the Domain Name, the Complainant relies on its thirty years of commercial use of the "RUG DOCTOR" mark, along with its trademark and service mark registrations, and on the Respondentís lack of use of the Domain Name in connection with a bona fide offering of goods or services. As evidence, the Complainant provided the results of a Web page directed to the Domain Name that states "Page cannot be displayed." Complaint, Annex L. This Panelís own investigation of the Domain Name resulted in a similar result, and the Panelís investigation of the Respondentís Web site at <www.techpro.com> revealed no use of or reference to the Domain Name. Finally, the evidence appears quite clear that the Respondent knew of the existence of the Complainantís mark and that the Respondent is itself not commonly known by the name "Rug Doctor."
The Respondent claims that the Domain Name has been used in connection with services that were in existence before notice of this dispute. The Respondent asserts that the Domain Name was obtained and is currently being used for a legitimate purpose because it was acting on behalf of a TechPro customer, Ms. Benitta Burke, when it registered the Domain Name. The Respondent states that TechPro, at Ms. Burkeís request, obtained the Domain Name and implemented it for use as Ms. Burkeís noncommercial, personal email. The Panel finds it fair to assume that the Respondent is not providing these services to Ms. Burke free of charge, and, therefore, the Respondent is involved in some degree of commercial activity that involves the Domain Name.
There has been no evidence presented in this case to establish that the Respondent intended or ever attempted to use the Domain Name for commercial gain in a manner that could mislead the Complainantís customers or dilute any of the Complainantís trademarks. The only evidence offered by the Complainant to prove that the Respondent has no legitimate interest in the Domain Name is the Respondentís lack of use of the Domain Name in connection with an offering of goods or services. However, this is not a case of registration coupled with deliberate inactivity, as has been found to constitute no rights or legitimate interests. American Home Products Corporation v. Ben Malgioglio, WIPO Case No. D2000-1602 (February 19, 2001) (finding no rights or legitimate interests in the domain name where the Respondent was passively holding the domain name). Here, the Respondent is hosting a personal email account for Ms. Burke; it is not passively holding the Domain Name. The Complainant appears to have assumed that the Domain Name was not being used by the Respondent and did not present any evidence of the Domain Name being used for the personal email of Ms. Burke. Additionally, the Complainant did not assert that the Domain Name was ever used to mislead its customers or dilute its trademarks or service marks. In fact, in the view of this Panel, there appears to be no way that a third party could ever become aware of the use of the Domain Name without first having received a personal email from Ms. Burke.
The Complainant maintains the burden of establishing a lack of legitimate interest in connection with the Domain Name. To that end, it is relying on an assumed lack of use of the Domain Name by the Respondent in connection with a bona fide offering of goods or services. However, the Respondent has set forth a plausible use of the Domain Name in connection with a service that existed before the notice of this disputeóthe hosting of a noncommercial, personal email account. Although the Panel admits that the Respondentís response is not absolutely persuasive, this Panel finds that the Complainant, without more evidence, has failed to meet its burden with regard to Paragraph 4(a)(ii) of the Policy.
C. Bad Faith
Under the circumstances, this Panel is not prepared to decide whether the Domain Name was registered or is being used in bad faith. However, the Panel wishes to make certain observations.
Paragraph 4(b) of the Policy provides certain circumstances that, for purposes of establishing the required element of bad faith, shall be evidence of bad faith. To support its allegation of bad faith on the part of the Respondent, the Complainant contends only the circumstance described in Paragraph 4(b)(i) of the Policyóthat the Respondent attempted to sell the Domain Name to the Complainant for more than the Respondentís out-of-pocket costs to register the Domain Name.
This Panel first notes that the Respondent has had control of the Domain Name since its registration in November of 2000. The Complainant provides no evidence that the Respondent ever contacted the Complainant or any other party in an attempt to sell the Domain Name in the two and a half years since the date of registration. Rather, the Complainant contends that the Respondent offered to sell the Domain Name for $5,000 only after Ms. Chicoine sent a cease and desist letter to the Respondent on January 3, 2003. The Respondent, on the contrary, contends that he never offered to sell the Domain Name and that it was Ms. Chicoine who offered to buy the Domain Name from the Respondent.
Under Paragraph 10(d) of the Rules, the Panel has the power to determine the admissibility, relevance, materiality and weight of the evidence presented. Another Panel has stated: "Although this administrative proceeding is a summary one, and although it is frequently stated that hearsay is admissible in arbitration, and although this Panel has no desire to encumber the domain name proceedings with unnecessary formalities, certain minimum standards of proof should be required in any forum." Cyro Industries v. Contemporary Design, WIPO Case No. D2000-0336 (June 19, 2000). This Panel also believes that such minimum standards of proof should be required.
While all of the statements offered as evidence are accompanied by sworn affidavits, the statements are in direct conflict. Thus, a Panel under these circumstances must decide who is telling the truth without having the opportunity to observe the testimony of each witness in person. It is, in this Panelís view, that this type of conflicting evidence, without more, must weigh in favor of a respondent. The trademark or service mark owner would be at a distinct advantage if its burden of proof was met simply by submitting a sworn affidavit of an offer to sell. Thus, to show bad faith under these circumstances, the Complainant must offer more than just a sworn affidavit.
Regarding the other circumstances that may illustrate bad faith, there is no evidence of prior WIPO Cases involving the Respondent or his business, and, thus, there is no evidence that the Respondent has engaged in a pattern of conduct to prevent owners of trademarks or service marks from reflecting the mark in a corresponding domain name or to obtain domain names. Additionally, the Complainant and the Respondent are not competitors and there is no evidence that the Respondent registered the Domain Name primarily for the purpose of disrupting the business of a competitor. Finally, the Respondent was not shown to be using the Domain Name in an attempt to attract, for commercial gain, Internet users to the Respondentís Web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Web site or location or of a product or service on it or a location.
This Panel concludes that the Complainant has failed to meet its burden to prove that the Respondent has no legitimate interest in the Domain Name. Therefore,
Complainantís request for transfer is denied.
Matthew D. Powers
Dated: May 14, 2003
1. The Panel points out that, as stated
in the beginning of this decision, although the Respondent claims to be acting
in the interest of his customer, Ms. Burke, the Panel views the legal owner
of the Domain Name to be the Respondent.
2. The Respondent's claim that Ms. Burke has been known as "Bob" and "Rugdoctor" for more than twenty years, though strange and somewhat unlikely, does not impact the view of this Panel.