WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merry Maids, Inc., ServiceMaster Brands, L.L.C v. Mary’s Maid to Order
Case No. D2007-1283
1. The Parties
The Complainant is Merry Maids, Inc., ServiceMaster Brands, L.L.C, Memphis, Tennessee, United States of America; represented by Kirkland & Ellis, Chicago, Illinois, United States of America.
The Respondent is Mary’s Maid to Order, Palm Beach, Florida, United States of America; Palm Beach, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <marysmaids.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2007. On September 3, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On September 6, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 17, 2007 providing the underlying registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 19, 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”).
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 September 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2007.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on November 12, 2007. 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 further notes that the Registrar has identified “Mary's Maid to Order” as the registered owner of the disputed domain name, that the Complainant has named that entity as the Respondent by its amendment to the Complaint, and that “Moniker Privacy Services” is simply a privacy name registration service. In these circumstances, the Panel will treat Mary's Maid to Order as the Respondent.
4. Factual Background
Complainant has registered the word, and word and design, service mark MERRY MAIDS on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 1343329, dated June 18, 1985, in international class (IC) 37, covering “commercial and residential cleaning services”, disclaiming exclusive right to use “maids” apart from the mark shown; registration number 1343330 (with design), dated June 18, 1985, in IC 37, covering commercial and residential cleaning services, disclaiming exclusive right to use “maids” apart from the mark shown; registration number 76223241, dated March 12, 2001, in IC 35, covering franchising services in the operation of commercial and residential cleaning services, disclaiming exclusive right to use “maids” apart from the mark shown. Complainant has also registered a MERRY MAIDS-formative mark, MERRY MAIDS RELAX. IT’S DONE, on the Principal Register of the USPTO. Complaint, Annex G.
Complainant has used the MERRY MAIDS service mark in connection with commercial and residential cleaning services since 1980. Complainant registered the domain name <merrymaids.com> in 1994 and has used that domain name to direct Internet users to a commercial website promoting its services and those of its franchisees, so to permit the scheduling of cleaning service appointments with local franchisees. (Complaint, Annexes H & I) A franchisee of Complainant in Boca Raton, Florida has been in operation since 1994, and users of the franchisee’s services may make appointments at <merrymaids.com> with that franchisee for services in Pompano Beach.1
According to the Registrar’s Verification Report, Respondent is the registrant of the disputed domain name <marysmaids.com>. According to the Registrars Verification Report, the record of registration of the disputed domain name was created on April 7, 2006 (2006-04-07).
The disputed domain name has been used to direct Internet users to a web portal that is captioned with the disputed domain name, with the sub-caption “find something interesting”. The web portal homepage lists a variety of cleaning related services, including “Maid Service”, “Merry Maid Cleaning”, “Nannies”, “Carpet Cleaning Services”, and others. The web portal provides a search function. Complainant provided evidence that at least at some stage clicking through on the listed “Merry Maids” link redirected Internet users to third party cleaning service providers not including Complainant.2 As of the date of visit by the Panel, the “Merry Maids” link directed Internet users to a list that first included Complainant.3 It appears that the disputed domain name is used to direct Internet users to a search parking page that presumably generates payment to Respondent based upon click through by users. The formula or algorithm for establishing the hierarchy of third-party links is not clear, although each of the identified links refers to service providers that would ordinarily be associated with cleaning services.
Complainant has provided evidence that “Mary’s Maids” is not registered as a corporation nor does it have a fictitious name registration in the state of Florida. However, there are two inactive corporations listed by the Florida Department of State Division of Corporations with identical or similar names (Complaint, Annex B, listing “Mary’s Maids Corp.” and “Mary’s Maid Service, Inc.”).
Complainant indicates that upon discovering the existence of the disputed domain name, in an effort to resolve this matter through good faith negotiations, it contacted Respondent through an independent agent and offered to buy the name from Respondent. Respondent’s domain name privacy service (Moniker.com) replied “current owner of the domain names is not really interested in selling the names. However, if you wish to pursue the purchase of the domains, we can forward offers of $25,000.00 USD or higher, per domain name, to the current owner to determine if they want to consider the offer.” Complainant indicates that the name of the sender of the inquiry was “redacted for privacy”. (Complaint, including Annex N) The email transmitted by the redacted independent sender said that the sender was “sure we will be able to reach a mutually beneficial agreement.” In addition, the reply from the domain name privacy provider stated, “These domains have actually been recently sold” (id.).
The Registration Agreement in effect between Respondent and Moniker Online Services, LLC subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts that it holds rights in the service mark MERRY MAIDS based on use in commerce and as evidenced by registration at the USPTO.
Complainant states that the disputed domain name is confusingly similar to its mark because it is using a “homonym to capitalize on Complainants’ marks”. Complainant refers to a decision under the Policy involving a domain name which modified the spelling a mark, but which resulted in similar pronunciation, for a finding of confusing similarity (Medtronic, Inc. v. gotdomains4sale.com, WIPO Case No. D2001-1033). Complainant asserts that because the disputed domain name is linked to services identical or similar to those provided by Complainant, “the services it promotes are so similar to the services Merry Maids has offered since 1980, that visitors to <marymaids.com> will necessarily become confused as to the origin, sponsorship, and/or endorsement of the domain(s).” Complainant further argues that a common typographical error may result in Internet users being taken to the website operated by Respondent, rather than that operated by Complainant. This, according to Complainant, infringes and dilutes Complainant’s service mark and results in a loss of goodwill. Complainant also asserts that when Respondent uses its service mark on its website without Complainant’s permission, this may confuse visitors by further implying association and/or sponsorship by Complainant.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complaint states that Respondent has not been authorized to use its name, and is not commonly known by the disputed domain name. Complainant indicates that Respondent registered the disputed domain name long after Complainant began using its service mark, and that Respondent was on constructive notice of its ownership of that mark. Complainant indicates that Respondent has not made bona fide use of the disputed domain name prior to notice of a dispute because Respondent is not operating a business; it is rather acting as a conduit for third parties. Complainant argues that Respondent is not making legitimate noncommercial or fair use of its mark in the disputed domain name.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith. Complainant argues that Respondent had knowledge of its service mark before it registered the disputed domain name, and that such knowledge itself supports a finding of bad faith. Complainant alleges that Respondent is not trying to sell a “generic” domain name because Respondent’s domain name is not generic. Complainant argues that Respondent attempted to sell the disputed domain name to Complainant for a price in excess of its out-of-pocket costs. Complainant argues that Respondent has attempted to attract Internet users to its website for commercial gain by creating confusion as to Complainant’s status as source, sponsor, affiliate or endorser of Respondent’s website.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The case file transmitted by the Center to the Panel includes a courier tracking record showing that documents in connection with this proceeding were successfully delivered to the address of Respondent indicated in its record of registration for the disputed domain name, as well as to its domain name privacy service provider. The Center also attempted to contact Respondent by e-mail. The Panel is satisfied that Respondent was given adequate notice of these proceedings, and that each party has been given adequate opportunity to present its position.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has long used in commerce and registered with the USPTO the MERRY MAIDS service mark (see Factual Background, supra). Complainant has established rights in the MERRY MAIDS service mark within the meaning of the Policy.
There is one principal issue in this Proceeding, and that is whether the disputed domain name <marysmaids.com> is confusingly similar to Complainant’s MERRY MAIDS service mark.4 The issue of confusing similarity between a domain name and a service mark is a question of fact. The Panel must make a determination based on factors typically assessed in a trademark infringement proceeding, taking into account relevant unique features of the Internet.
Complainant holds rights in a “weak” service mark. Both terms forming that mark are common descriptive terms. As a condition of registration, Complainant was required by the USPTO to disclaim exclusive rights to use “maids”, which is a generic term for the type of service provider supplied by its business, apart from the combination term. A “maid” is “a woman or girl employed to do domestic work”.5 The term “merry” is a commonly used adjective defined as “full of gaiety or high spirits”.6 In combination, Complainant’s service mark is synonymous with a happy cleaning service provider.
Complainant has used the combination term MERRY MAIDS for a substantial period of time, and registered that term as a service mark with the USPTO. Complainant has submitted the requisite affidavit of incontestability to the USPTO. This is an uncontested proceeding, and the Panel assumes that Complainant has established secondary meaning in the service mark. However, because the mark is highly descriptive, it is relatively weak.
The term “maids” as used in MERRY MAIDS and the term “maids” as used in <marysmaids.com> are obviously identical. If the disputed domain name included only that term, and if Complainant enjoyed exclusive rights to use of the term “maids” standing alone, the disputed domain name would be identical to the mark. But, “maids” is a generic term for cleaning service providers. Complainant’s service mark therefore must be compared on the basis of the adjectival term “merry”, and the possessive term used in the disputed domain name, “marys”. The principal question before the Panel is whether the terms “merry” and “marys” are confusingly similar when used in connection with the term “maids”.
The first two criteria for comparing a mark and an allegedly infringing term are to compare their visual impression (or sight) and sound.7 Both MERRY and “marys” start with the letter “m”, and both include an “ry” combination. The second “r” (for “rr”) in Complainant’s term slightly varies the visual impression from the single “r” in “marys”, though Complainant’s second “r” is silent in pronunciation. Complainant’s MERRY includes the vowel “E”, while Respondent’s “marys” includes the vowel “a”. The vowels “e” and “a” have a somewhat different appearance, but are similar in pronunciation. The “s” in Respondent’s “marys” has no counterpart in Complainant’s “Merry”. This gives a somewhat different visual impression to Respondent’s term, as compared with Complainant’s.
The determinative difference between the MERRY of Complainant’s mark and the “marys” of the disputed domain name lies in their meaning, the third criteria of comparison. While MERRY is synonymous with happy, “Mary” is as a given name. “Mary” has no other meaning. Combined with an “s” which signals the possessive, “Mary’s” or “marys” means something possessed by a person named “Mary”, as in Mary’s Cleaning Service or Mary’s Maids. This is a quite different meaning than “Happy Cleaning Service”, “Happy Maids” or “Merry Maids”.
The precedent cited by Complainant for finding similarity between a mark and a differently spelled version of that mark, Medtronic, Inc. v. gotdomains4sale.com, WIPO Case No. D2001-1033, does not help Complainant’s cause. In that proceeding, the complainant held rights in what the panel determined to be a “strong” mark. Although the explanation for that finding is not extensive, it appears on its face that the trademark in issue in that case, “Medtronic”, was distinctive in the sense of not being found in common language (although it may have been composed of two shortened common terms). That is materially different from the circumstance of the instant case in which Complainant’s mark is merely the combination of two highly descriptive terms, “MERRY” and “MAIDS”.
Keyboard users can mis-type almost anything. It seems doubtful to the Panel that an individual attempting to type <merrymaids.com> for MERRY MAIDS would inadvertently type <marysmaids.com>. In any case, the mere possibility of a mis-typing is not enough to give Complainant more extensive rights in its mark that it is seeking here.
There are literally thousands of cleaning services in the United States. Many of them use the term “maid” or “maids” in their name. Complainant does not have the right to prevent them from using that term, since “maid” is a generic term in the English language. A common way to identify a business is to include the name of the owner (real or fictitious) as a predicate. There are only so many given names that could be combined with “maids”, and “Mary” is a very popular name. By giving Complainant rights in “Mary’s Maids” or <marysmaids.com>, the Panel would be substantially expanding Complainant’s dominion over the universe of “-maids” combination terms. This Panel is disinclined to do that.
Complainant chose for itself a service mark that combines two common descriptive words in the English language. Although it appears to have established some secondary meaning in that combination, at least from the standpoint of this proceeding, it bears the consequences of having chosen a weak highly descriptive mark.
The Panel finds that Complainant has rights in the service mark “MERRY MAIDS”, but that the disputed domain name <marysmaids.com> is not confusingly similar to that service mark.
Having found that the disputed domain name is not confusingly similar to Complainant’s mark, the Panel need not address further elements of the Policy.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Dated: November 26, 2007
1 Complainant refers to “Pompano Beach Merry Maids” in its Complaint, but the address shown on the supporting document lists a Boca Raton, Florida, address. Pompano Beach is shown within the service area of the Boca Raton franchisee. Complaint, Annex J.
2 Complaint, Annex L, printout of August 6, 2007.
3 Panel visit to http://www.marysmaids.com, November 25, 2007.
4 Conduct similar to that engaged in by Respondent in this Proceeding has been considered by this sole panelist on a number of occasions. See, e.g., Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537, and MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139.
5 Merriam-Webster’s Online Dictionary, at http://www.m-w.com/dictionary/maid, definition 2b.
6 Id., at http://www.m-w.com/dictionary/merry.
7 See, e.g., AMF v. Sleekcraft Boats, 599 F. 2d 341 (9th Cir. 1979).