World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ServiceMaster Brands L.L.C., TruGreen Limited Partnership v. Paydues, Inc.

Case No. D2012-1616

1. The Parties

Complainants are ServiceMaster Brands L.L.C. of Burlington, Vermont, United States of America (“US”) and TruGreen Limited Partnership of Memphis, Tennessee, US, represented internally.

Respondent is Paydues, Inc. of Santa Fe, New Mexico, US.

2. The Domain Names and Registrar

The disputed domain names <furnituremedicfranchises.com>, <merrymaidsfranchise.com>, <servicemasterfranchise.com> and <trugreenfranchise.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 10, 2012. On August 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 14, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on August 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 17, 2012.

The Center appointed Andrew Mansfield as the sole panelist in this matter on October 5, 2012. 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

ServiceMaster Brands L.LC. and TruGreen Limited Partnership (collectively referred to as Complainants) are both subsidiaries of The Service Master Company. The ServiceMaster Company owns several leading service brands, including “Furniture Medic,” “Merry Maids,” “ServiceMaster, “ServiceMaster Clean,” and “TruGreen.” The branded services provided under these marks are delivered by hundreds of franchisees, licensees, and company owned service providers. Revenues are substantial with ServiceMaster reporting operating revenues of over US $3.2 billion for 2011.

ServiceMaster Brands L.L.C. owns federal service marks and trademark registrations for FURNITURE MEDIC, MERRY MAIDS, and SERVICEMASTER, while TruGreen Limited Partnership owns federal trademark registrations for TRGREEN. Complainant ServiceMaster Brands L.LC. has used FURNITURE MEDIC in the United States since at least 1991, MERRY MAIDS in the United States since at least 1980, and SERVICEMASTER in the United States since at least 1952. Complainant TruGreen Limited Partnership has used the mark TRUGREEN in the United States since at least 1956.

Among many trademarks owned by Complainants, Complainants own the following United States trademarks relevant to the decision in this proceeding:

1. Mark: FURNITURE MEDIC., United States Patent and Trademark Office Registration Numbers 1,712,243 and 2,512,612. Registration Dates September 1, 1992 and November 27,2001 respectively.

2. Mark: MERRY MAIDS, United States Patent and Trademark Office Registration Numbers 1,343,329 and 2,512,613. Registration Dates June 18, 1985 and November 27, 2001 respectively.

3. Mark: SERVICEMASTER. United States Patent and Trademark Office Registration Numbers 782,584 and 922,556. Registration Dates December 29, 1964 and October 19, 1971 respectively.

4. Mark: TRUGREEN,United States Patent and Trademark Office Registration Numbers 1,962,583 and 2,543,094. Registration Dates March 19, 1996 and February 26, 2002 respectively.

Complainants have registered and advertised its business under domain names corresponding to its various service marks for many years. Complainants registered <furnituremedic.com> in 1996, <merrymaids.com> in 1994, <sericemaster.com> in 1997, and <trugreen.com> in 1994.

5. Parties’ Contentions

A. Complainant

Complainant alleges that Respondent has registered the disputed domain names and that those domain names are confusingly similar to Complainants’ trademarks. Complainant alleges that Respondent is using its trademarks on websites available at the disputed domain names to sell Respondent’s franchise analysis software and that Complainants have not authorized this use. Further Complainants allege that Respondent registered and is using the disputed domain names in bad faith.

Complainant asserts that the disputed domain names are identical or confusingly similar to trademarks or service marks in which Complainants’ have rights. Respondent’s disputed domain names are identical to the Complainants’ trademarks, save for the addition of the terms “franchise” or “franchises”. Complainant argues that simply adding a “generic descriptive term and a TLD suffix is insufficient to avoid confusing similarity”.

Complainants argue that Respondent has no rights nor does it possess any legitimate interests in the disputed domain names. Respondent, according to Complainants, is attempting to trade off the respect and recognition of the public for Complainants’ trademarks. Complainants have identified scores of other domain names registered by this Respondent that include famous trademarks. Complainants assert that use of a trademark through a domain name that intentionally trades on the fame of a trademark is not a bona fide offering of goods or services.

Further, Complainants state they are unaware of any evidence to suggest that Respondent has ever been commonly known by any of the disputed domain names.

Complainants argue that the disputed domain names were both registered and are being used in bad faith. Due to the length of time that the trademarks related to the disputed domain names have been in use, Complainants argue that Respondent must have intentionally selected the marks to trade on the good will associated with the trademarks. Complainants assert that Respondent used the Marks because they are well known and well respected and involve franchise operations. Complainants argue that the use of Complainants’ trademarks on the websites displayed at the disputed domain names creates the impression that the websites at the disputed domain names are operated or endorsed by Complainants.

Additionally, Complainants argue that Respondent has shown a pattern of bad conduct. Respondent has, it is alleged, registered numerous domain names that contain the trademarks of third parties. For example, Complainants indicate that Respondent was recently sued for trademark infringement in the Northern District of Texas, and lost by default. Respondent has also been named as a Respondent in fifteen UDRP proceedings cited by Complainants.

B. Respondent

Respondent did not reply to Complainants’ contentions.

6. Discussion and Findings

Complainants have the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:

i. The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainants have rights;

ii. Respondent has no rights or legitimate interests in respect of the disputed domain names; and,

iii. The disputed domain names were registered and are being used by Respondent in bad faith.

Even when a respondent defaults, as is the case here, the Complainants must establish and carry the burden of proof on each of the three elements identified above. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383. Further, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate.”

The Panel proceeds to each of these elements below.

A. Identical or Confusingly Similar

The Panel finds that each of the disputed domain names is confusingly similar to one of Complainants’ marks.

The disputed domain names, <furnituremedicfranchises.com>, <merrymaidsfranchise.com>, <servicemasterfranchise.com> and <trugreenfranchise.com>, consist entirely of Complainants’ registered trademarks. The only difference in this Panel’s opinion between Respondent’s disputed domain names and Complainants’ registered trademarks is the addition of a generic word in the domain name and the generic top-level domain “.com.”

Numerous UDRP panel decisions have reiterated that “the mere addition of common terms” to a trademark “does not change the overall impression of the designations as being a domain name connected to the Complainant.” PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696; PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja, WIPO Case No. D2000-1409; and America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184. In this case, the disputed domain names consist solely of the word “franchises” in addition to one of Complainants’ trademarks.

The Panel finds that Complainants have satisfied paragraph 4(a)(i) of the Policy. The Panel finds the disputed domain names are confusingly similar to a trademark or service mark in which Complainants have rights.

Complainants have satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel is satisfied that Complainants have made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, a respondent must carry the burden of demonstrating a right or legitimate interest in a disputed domain name. By matter of default, Respondent has failed to do so, and Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In any event, based on the uncontested evidence provided by Complainants as described above, the Panel finds no basis to establish that Respondent has any rights or legitimate interests in the disputed domain names. Complainants have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith. If found, any one of these elements, though non-exclusive, may be found to be evidence of the registration and use of the domain name in bad faith

i. Circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

ii. The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

iii. The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv. By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

Respondent’s websites at the disputed domain names utilize the trademarks and logos of Complainants in such a way as to make it appear that the disputed domain names might be affiliated with Complainants or sponsored by them. The panel finds the disputed domain names were used at the time of the Complaint was filed in such a way as to create a great deal of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

An Internet user searching for information on obtaining one of Complainants’ franchises might, for example, arrive at the websites at the disputed domain names. Respondent would benefit from the user’s confusion as to the source, sponsorship, or affiliation of the disputed domain names.

The Panel finds that this confusion was created intentionally so that Respondent could commercially gain from the confusion. A respondent’s use on its website of a trademark or logo identical to the complainant’s trademark or logo has been found to be prima facie evidence of bad faith. See Australian Broadcasting Corporation v. P & C Hewitt, WIPO Case No. D2001-0457; Renault S.A.S., Automobile Dacia S.A. v. Aritz Goikoetxea Arrutia, WIPO Case No. D2008-1042; and, Pitcher Partners Licensing Pty Ltd v. N/A, WIPO Case No. D2008-0989.

The dates of registration of the disputed domain names (so many years after the launch of Complainants’ businesses and trademarked services) indicate to the Panel that the original registrations were done in bad faith. Complainants have submitted evidence they attempted to settle this dispute directly with the Respondent and they received no response. Further, the Panel has reviewed and considers the evidence that the Respondent has been found to have violated the Policy in numerous other decisions by other UDRP panels.

The Panel finds that Complainant has satisfied paragraph 4(b)(iv) of the Policy and that the disputed domain names were registered and are being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <furnituremedicfranchises.com>, <merrymaidsfranchise.com>, <servicemasterfranchise.com> and <trugreenfranchise.com> be transferred to the Complainants.

Andrew Mansfield
Sole Panelist
Dated: October 19, 2012

 

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