WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Terminix International Company Limited Partnership v. Statistical Research Consulting and Reuben Norman
Case No. D2012-1744
1. The Parties
The Complainant is The Terminix International Company Limited Partnership of Memphis, Tennessee, United States of America, represented by The ServiceMaster Company, United States of America.
The Respondent is Statistical Research Consulting and Reuben Norman of New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <poweroverpests.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2012. On August 29, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Statistical Research Consulting 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 the Respondent of the Complaint, and the proceedings commenced on September 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2012. On October 10, 2012, the Respondent requested an extension of the Response due date.1 On October 11, 2012, the Complainant filed a response to the Respondent’s request for extension. On October 12, 2012, the Center informed the Respondent that the request for extension of the Response due date was declined. The Response was filed with the Center on October 15, 2012.
The Center appointed William R. Towns as the sole panelist in this matter on October 25, 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
The Complainant is a leading provider of termite and pest control services. The Complainant is the owner of a United States of America (U.S.) registration for the trademark POWER OVER PESTS, issued by the United States Patent and Trademark Office (“USPTO”) on July 8, 2008, for termite and pest control services. The Complainant often uses the POWER OVER PESTS mark as a tagline in combination with its TERMINIX mark, as shown here:
Power over pests:
The disputed domain name <poweroverpests.com> was created on June 8, 2012, according to the concerned Registrar’s WhoIs records. The disputed domain name currently is being used to redirect Internet users to one or more videos posted on the Youku website (“www.youku.com”). Youku is a Chinese video hosting service based in the People’s Republic of China, and reportedly the second largest video website in the world after YouTube.
The Complainant has submitted evidence by way of sworn declarations of two of its representatives2 that the Respondent3 contacted the Complainant’s legal department by telephone on the same day the disputed domain name was registered, leaving a voice mail message indicating that the Respondent had registered the disputed domain name, that it was being pointed to a Chinese video website containing an Orkin4 commercial, and inquiring whether the Complainant had any interest in it.
During subsequent telephone conversations with the Complainant initiated by the Respondent5, Dr. Norman described the Respondent’s business model as involving the bulk registration of generic or descriptive domain names, which according to Dr. Norman the Respondent offered for sale in bundles of 20 for USD 1,000,000.00. Dr. Norman indicated that the Respondent would agree to sell the disputed domain name to the Complainant for 1/20th of this amount – i.e., USD 50,000.00. The Complainant was unwilling to do so and subsequently commenced this proceeding seeking the transfer of the disputed domain name.
The Respondent has not taken issue with the accounting of events as set forth in the sworn declarations of the Complainant’s representatives. The Complainant also has presented evidence that the Respondent has registered at least 500 domain names.6 The Respondent does not appear to dispute this either, but asserts that only “generic” domain names are registered. Nonetheless, in at least one prior proceeding under the UDRP, the Respondent’s registration and use of a domain name has been found to be in bad faith. See OWN LLC v. Public Domains, NAF Claim No. 1382736 (<owntv.biz>). Apparently in reference to that case, the Respondent in a posting described the linking of domain names to video clips on sites such as Facebook and YouTube as the Respondent’s ultimate business model for generating advertising revenue.
5. Parties’ Contentions
The Complainant submits that it obtained a U.S. trademark registration for POWER OVER PESTS in 2008, and that it has used the mark in commerce since 2007. According to the Complainant, the mark is used in connection with residential and commercial termite and pest control services provided to over two million households in the U.S. through 300 company owned and 100 franchise locations, which resulted in operating revenues of approximately USD 1.2 billion in 2011.7 The Complainant provides website screenshots and other advertising materials supporting its claim that the POWER OVER PESTS mark regularly is used on its website and marketing collateral, in magazine and billboard advertising, and in television commercials. The Complainant further submits that a search conducted for “power over pests” using Google’s search engine “reveals that the Mark is synonymous with Complainant’s services”.
The Complainant asserts that the disputed domain name is confusingly similar to its POWER OVER PESTS mark, as it is identical to the Complainant’s mark. The Complainant maintains that the Respondent was aware of the Complainant and the Complainant’s POWER OVER PESTS mark when registering the disputed domain name, which is demonstrated by the Respondent contacting the Complainant on the same day the disputed domain name was registered, at which time the Respondent left a voice mail message advising that the disputed domain name was linked with an online video clip of an Orkin television ad, and inquiring whether the Complainant might have any interest in acquiring the disputed domain name.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent has not been authorized to use the Complainant’s mark, and that the Respondent is not commonly known by the disputed domain name. Further, the Complainant asserts that the Respondent is not using or making demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, nor making any legitimate noncommercial or other fair use of the disputed domain name. To the contrary, the Complainant argues from the record that the Respondent intentionally registered a domain name reflecting the Complainant’s mark for purposes of cybersquatting – either to sell the disputed domain name reflecting the Complainant’s mark to the Complainant at a cost greatly exceeding any out-of-pocket expenses directly related to the domain name, or to derive income from linking the disputed domain name to videos posted by the Respondent on video clip sites.
In view of the foregoing, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. In addition, the Complainant asserts that the Respondent’s registration of other domain names reflecting third-party trademarks or names establishes a pattern of bad faith behavior. While acknowledging that many of the names registered by the Respondent may be viewed as “generic”, the Complainant points to the Respondent’s registration and use of the domain name <owntv.biz>, in which a UDRP panel found cybersquatting and transferred the domain name to the complainant OWN LLC, as illustrative. In addition, the Complainant also cites the Respondent’s registrations of domain names such as <amycarter.org>, <clintonmccaindebate.com>, <googlenett.info>, <stonesrockband.info> as evidence that the Respondent is attempting to profit from other third-party marks or notoriety.
The Respondent acknowledges that the disputed domain name is similar to the Complainant’s POWER OVER PESTS mark, but appears to argue that the Complainant lacks enforceable rights in the mark notwithstanding the USPTO registration. The Respondent asserts that historically the USPTO did not accept marks that were descriptive, suggestive, or generic, although the Respondent believes this has changed as of late. In any event, according to the Respondent, the Complainant’s mark is “at best suggestive, with a short history and little usage time with which to obtain even weak recognition by the public.”8
The Respondent asserts rights in the disputed domain name as follows:
“As I have stated, the claimed trademark only covers a limited class in USPTO and I in fact do not believe that even this limited range would stand up to federal scrutiny. As it so happens I am working on a very small TV-like system to bring in generic video from Asia. I chose this domain to use fancifully for this purpose. It has been used for months to fancifully link seemingly openly available, generic link clips from Asia and has continued until now. I only chose openly available clips on generic video systems, similarly to the way that Google appears to be using such domains on YouTube now.”
The Respondent denies any bad faith, asserting that the Complainant’s mark is invalid and that the Respondent is seeking “to establish my own USTPO mark as soon as possible”. The Respondent further argues that the UDRP is not being applied in a manner consistent with U.S. law. As the Respondent sees it, since 2003 domain names have been recognized by U.S. courts as being “tangible property”. The Respondent reasons from this that the first person to register <poweroverpests.com> acquires such property rights, which in the Respondent’s view precludes a transfer of the domain name under the UDRP based on a “weak” mark that is used for a limited class of goods or services. The Respondent maintains that the Complainant would be entitled to a transfer in this case, if at all, only were the Complainant to demonstrate that its POWER OVER PESTS mark is a famous mark under the United States Federal Trademark Dilution Act (“FTDA”).
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 -177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170.
Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is identical to the Complainant’s mark. In considering this issue, the first element of the Policy stands essentially as a standing requirement.9 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the disputed domain name incorporates the Complainant’s mark in its entirety and is identical to the Complainant’ mark.
The Respondent acknowledges that the disputed domain name is similar to the Complainant’s mark, but appears to argue that the Panel should give no weight to the USPTO’s registration of the Complainant’s POWER OVER PESTS mark on the grounds that the mark is either generic or merely descriptive with respect to the Complainant’s services. Some UDRP panel decisions have held that registration of a mark is prima facie evidence of validity, creating a rebuttable presumption that the mark is inherently distinctive, which respondents have the burden of refuting. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Other UDRP panels have concluded more broadly that the complainant’s holding of a registered mark is sufficient without more to establish rights under the Policy, and that a respondent’s claim that registration should not have been granted or should be revoked is a matter for the courts or trademark authority of the relevant country. See, e.g., Hola S.A. and Hello Limited v. Idealab, WIPO Case No. D2002-0089. See also Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700.
Given the limited scope of the Policy and this Panel’s narrowly circumscribed jurisdiction, the Panel’s inclination is to adopt the reasoning of the panels in the second line of cases referred to above. See Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635. However even if, for purposes of reaching a decision in this case, the Panel would adopt the reasoning of the first line of cases, the Panel concludes that the Respondent has not made a sufficient showing to rebut the presumption of validity arising from the USPTO registration of the Complainant’s mark. The Panel has no occasion in the circumstances of this case to second guess the USPTO determination that the Complainant’s mark is a distinctive identifier of the Complainant’s services.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain name incorporates the Complainant’s mark in its entirety and is identical to the Complainant’s mark. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark; nor is there any evidence that the Respondent has been commonly known by the disputed domain name. Further, the record reflects that the Respondent registered the disputed domain name, linked the disputed domain name with a video on the Youku website advertising the services of a direct competitor of the Complainant, then contacted the Complainant and attempted to sell the disputed domain name to the Complainant for USD 50,000.00.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
A number of UDRP panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant, at least in circumstances indicating that the respondent was not aware or reasonably should not have been aware of the complainant’s rights in the mark. See, e.g., National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424. But the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark. Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964. See also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.
The Respondent has not demonstrated to the satisfaction of this Panel that the Respondent registered the disputed domain name based on a good faith belief that its value was based on attraction as a dictionary word or descriptive term. To the contrary, based on the record in this proceeding, it is clear that the Respondent was aware of the Complainant and had the Complainant’s POWER OVER PESTS mark in mind when registering the disputed domain name. The Panel finds that the Respondent most likely registered the disputed domain name in order to exploit and profit from the Complainant’s trademark rights, either by attempting to sell the disputed domain name to the Complainant for an amount greatly in excess of the out-of-pocket costs directly related to the disputed domain name, or by diverting Internet users seeking the Complainant’s website to videos to which the disputed domain name is linked posted on video clip sites, with the intention – in the Respondent’s own words – “to derive future income from ad sales.”
In view of the foregoing, the record before the Panel does not reflect the Respondent’s use of or preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Nor can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Respondent clearly was aware of the Complainant and had the Complainant’s mark in mind when registering the disputed domain name. The facts and circumstances in the record evince that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to sell the disputed domain name to the Complainant at an exorbitant price, or otherwise to capitalize on or take advantage of the Complainant’s trademark rights by creating a likelihood of confusion with the Complainant’s mark in order to divert Internet users to a video clip site for the Respondent’s commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <poweroverpests.com> be transferred to the Complainant.
William R. Towns
Date: November 12, 2012
1 The Respondent indicated the extension was sought to allow the Respondent to file a trademark application for POWER OVER PESTS prior to submitting a Response to the Complaint.
2 The sworn declarations were made by Ms. J. Scott, Manager of the Complainant’s Legal Operations and Contracts, and Mr. M. Duncan, Intellectual Property Manager for the Complainant’s parent company, The ServiceMaster Company.
3 The contact was made by an individual identifying himself as Dr. Reuben Norman. The Panel notes that Dr. Norman’s postal address is the same as that provided for the WhoIs registrant, Statistical Research Consulting. Further, Dr. Norman submitted the Response on behalf of Statistical Research Consulting. It is clear from the record that Dr. Norman controls Statistical Research Consulting. The term “Respondent” as used herein refers interchangeably to Statistical Research Consulting and Dr. Norman, unless otherwise indicated.
4 Orkin is a direct competitor of the Complainant.
5 Dr. Norman’s initial voice mail message provided a contact email address, [[address omitted]]@yahoo.com, but no telephone contact. The Complainant sent a reply to this email address, but all telephone communications were initiated by Dr. Norman, who declined to provide a telephone contact number.
6 The record in this proceeding strongly indicates that Dr. Norman has registered a large number of domain names either in his own name, or under the names of Statistical Research Consultants, Business Words, and Public Domains.
7 The Complainant relies on its March 6, 2012 SEC filing in support of operating revenue figures.
8 The Panel notes parenthetically that under well settled U.S. trademark law a suggestive mark is considered inherently distinctive and entitled to registration upon use in commerce without a showing of secondary meaning or acquired distinctiveness.
9 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.