WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Anyclean Premium Limited v. Jethro Denahy, Any-Clean
Case No. D2017-0581
1. The Parties
The Complainant is Anyclean Premium Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Bromhead Johnson, United Kingdom.
The Respondent is Jethro Denahy, Any-Clean of London, United Kingdom, represented by Briffa Solicitors, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <any-clean.com> (the "Disputed Domain Name") is registered with 123-Reg Limited (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 22, 2017. On March 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 2017, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2017. The Response was filed with the Center on April 13, 2017.
The Center appointed Nick J. Gardner as the sole panelist in this matter on April 21, 2017. 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 company which operates a cleaning business. It is based in London, England.
Details as to the Respondent and his business are discussed further below as the relevant facts are in dispute. The Disputed Domain Name was registered on February 13, 2010. It is linked to a website (the "Respondent's Website"). Details as to this website are also discussed below.
The Complainant owns two trademark registrations in respect of the term "anyclean", namely United Kingdom 00002405347 for "anyclean", registered on May 12, 2006 and United Kingdom 00003136081 for "anyclean" and "any clean", registered on February 5, 2016. The latter also includes the words "any clean" (i.e. separated as two words). Each of these marks is registered in respect of the word or words in combination with a graphical representation of the word(s), namely the marks are all in lower case letters. The earliest of these trademarks was applied for on November 01, 2005. The Complainant says that it has used the term "anyclean" in relation to its business since at least 2000 but has not produced any evidence substantiating such use.
5. Parties' Contentions
The Complainant says the Disputed Domain Name is identical to its "anyclean" trademark, as the inclusion of a hyphen makes no material difference.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and that the Respondent has not been authorized by the Complainant to use its "anyclean" trademark. The Respondent is not an authorized dealer, distributor or licensor of the Complainant and is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
The Complainant also says that the Respondent is not commonly known as "anyclean".
The Complainant alleges that the Respondent has used the Disputed Domain Name for a pay-per-click ("PPC") website offering links through to the Complainant's services and offerings for competitors' goods and services, while he attempts to sell the Disputed Domain Name for valuable consideration far in excess of any out-of-pocket costs. Accordingly the Respondent has not made a bona fide offering of goods or services under the Disputed Domain Name, and through the Respondent's Website.
The Complainant says that the Disputed Domain Name has been registered and used in bad faith. It says the Respondent knew of, or should have known of, its "anyclean" trademark.
It also says that the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent's website or other online locations, such as those of competitors, by creating a likelihood of confusion with the Complainant's mark. This is clear from the Respondent's advertisement of links to the Complainant's products under the mark "anyclean" and those of competitors and competing and similar products.
The Complainant also says that "it is highly likely that the domain name was registered or acquired by the Respondent in order to prevent the Claimant from using its mark in a corresponding domain name. The Respondent has engaged in such conduct previously, as shown in WIPO administrative panel decision, IndusInd Bank Limited v. DomainCA (Whois Protect Service) / Yungu Jo, WIPO Case No. D2014-0811".
The Respondent has produced a very detailed Response with accompanying documentary evidence and citation of a number of previous cases under the Policy. It is not necessary to repeat all that the Respondent has said here. The salient points the Respondent makes are as follows.
The Respondent accepts that the Complainant has registered trademarks in respect of the terms "anyclean" and "any clean". He also accepts the Disputed Domain Name is similar to those trademarks. He says that the words "any" and "clean" are highly descriptive when used in relation to cleaning services and denies that the Complainant's trademarks give it any monopoly in those words. He points out that all the Complainant's trademarks are in combination with a graphical representation of the words and says that it is only that graphical representations that are capable of being protected by the trademarks – though he says that even those are in very general fonts and not themselves distinctive.
He says the Complainant has produced no evidence to support its claim of having used the term "anyclean" since 2000. He says he had never heard of the Complainant or its "anyclean" trademark when he started his business in 2010.
The Respondent says he has used the term "any-clean" since 2010 in connection with a bona fide cleaning business. He produces various invoices and documentary evidence to substantiate this claim. He says this is long before he had any notice of this dispute and hence establishes a legitimate interest.
The Respondent denies that the Respondent's Website contains PPC links. The only links are on a page to other local sites his customers may find useful, but which does not involve any payment to him.
The Respondent fiercely disputes he has acted in bad faith. He denies having registered the Disputed Domain Name for any purpose other than in connection with his own business and says that after the Complainant contacted him he added a disclaimer to his home page.
The Respondent denies having been involved in any previous complaint under the Policy and says the case the Complainant relies upon is nothing to do with him. He says he is surprised the Complainant "appears to be trying to mislead the Panel".
The Respondent makes more points in support of his arguments but it is not necessary to consider those further – where relevant they are addressed below.
6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Disputed Domain Name that:
(i) the Disputed Domain Name is identical with 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 Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it owns a number of registered trademarks in respect of the term "anyclean" and "any clean" (the "ANYCLEAN trademark"). Each of the trademarks is for the word or words in question in combination with a graphical representation of those word(s). Similarity between a domain name and a device mark which includes words or letters is a readily accepted principle where the words or letters comprise a prominent part of the trademark in question – see, for example, EFG Bank European Financial Group SA v Jacob Foundation WIPO Case No. D2000-0036 and Sweeps Vacuum & Repair Centre, Inc. v Nett Corp., WIPO Case No. D2001-0031. The Panel holds that the Disputed Domain Name is similar to the ANYCLEAN trademark. It is well established that generally the generic Top-Level Domain ("gTLD") of a disputed domain name (in this case ".com") may be ignored for the purpose of determining whether the disputed domain name is identical or confusingly similar – see, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Accordingly the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In assessing this issue it is necessary to first address the rather surprising disparity between the Complainant and the Respondent as to the nature of the Respondent and the Respondent's Website. The Complainant says the Respondent's Website is a PPC site. The Respondent vehemently denies this. The Panel has inspected the Respondent's Website. Its contents correspond to the material exhibited by the Complainant so it seems clear the Complainant has been viewing the same site. It contains a homepage describing the Respondent's cleaning business and with a revolving gallery of images showing cleaned premises, and other information such as telephone and email contact details. The text on the page describes a cleaning business – for example – "We are a professional, reliable, economical cleaning company serving throughout the London area. Our aim is to offer a consistently high standard, value for money along with a friendly and professional service. We build our business on trust, quality of service, competitive pricing along with referrals from existing clients." The homepage then displays links to other pages within the site containing for example, testimonials, a booking form, and details of case studies. One such page is entitled "useful links" and provides a link to a "trusted traders" website and to two local companies operating in other fields of activity. None of this has anything to do with the Complainant except insofar as I is in the same trade, and none of this appears to be anything other than what the Respondent says it is, namely a website operated by a small cleaning business. Nowhere so far as the Panel can see are there any typical PPC links. The Panel is unable to understand how the Complainant concluded this was a dedicated PPC website.
The Panel notes the Complainant also relies upon various results it has obtained when various terms ("anyclean", "ANYCLEAN", "any-clean" and ANY-CLEAN") are (according to the Complainant) "searched through the homepage [of the Respondent's Website]". The Panel does not understand what the Complainant means when it says "searched through the homepage". The results in question, which the Complainant has placed in evidence, are not a search of the content of the Respondent's Website and appear to the Panel to simply be the results of a Google search for the relevant term, albeit presumably one that was launched when viewing the Respondent's Website. As such the Panel is not persuaded these have anything to do with the Respondent.
The Panel also notes the Complainant has said that the Respondent has previously engaged in conduct amounting to registering and using a domain name in bad faith and references the IndusInd Bank Limited v. DomainCA (Whois Protect Service) / Yungu Jo, supra. The Panel is equally bemused by this allegation. This case, as the Respondent correctly points out, has absolutely nothing to do with the Respondent. The Panel has no idea why the Complaint has cited it in this manner.
Turning to the Policy the Panel finds there is clear evidence that both paragraph 4(c)(i) and (ii) of the Policy apply in this case. Paragraph 4(c)(iii) of the Policy does not apply as the Respondent's use has not been noncommercial. The term "any-clean" comprise two ordinary English words, "any" and "clean". The Panel considers these could readily be independently derived by a person establishes a cleaning business and sees no reason to doubt the Respondent's account that this is what he did before he had any knowledge of the Complainant, still less of any dispute.
Accordingly the Complainant has failed to establish that the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
Whilst the Panel's finding under (B) above is sufficient to enable a conclusion to be reached in relation to this Complaint, the Panel also finds that there is no evidence to suggest that the Disputed Domain Name has been registered and used in bad faith. The Respondent says he had never heard of the Complainant or its ANYCLEAN trademark when he registered the Disputed Domain Name. Given the absence of evidence from the Complainant as to the size and nature of its business that account seems to the Panel to be entirely credible and believable and the Panel sees no reason to doubt the Respondent's statement. It is true that the Complaint's earliest trademark predates the establishment of the Respondent's business but that alone does not entitle the Complainant to succeed. The Complainant has produced no evidence as to the size of its business, number of customers, financial results or the like and accordingly there is no material before the Panel to enable it to infer the Respondent knew of the Complainant when starting his business. In any event the Panel agrees with the Respondent that the words "any" and "clean" are descriptive when applied to a cleaning business and in such circumstances the Complainant would need to establish by credible evidence details of it having a significant reputation in those terms before the Panel would be prepared to draw inferences adverse to the Respondent. It has not done so.
The Panel also rejects the further allegations made by the Complainant as to the Respondent having registered the Disputed Domain Name with a view to selling it to the Complainant, or so as to create a likelihood of confusion. There is no evidence to support these allegations and they are clearly inconsistent with the actual nature of the Respondent's business and the way in which the Disputed Domain Name has been used. It is true that the Respondent has added a disclaimer to his homepage. This reads as follows – "Please note: Any-Clean Services is a trading name of Jeth Denahy and is not associated with any other business using the same or similar name". This seems to the Panel to have been an entirely reasonable thing for the Respondent to have done when he became aware of the Complainant and the similarity in the names of their respective businesses.
Accordingly the Panel concludes there is no credible evidence to establish bad faith on the part of the Respondent and the Complainant has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled.
D. Reverse Domain Name Hijacking
Several circumstances of this case have led the Panel to consider whether the filing of the Complaint constitutes "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name" – see the Rules, paragraph 1, definition of Reverse Domain Name Hijacking ("RDNH"). Paragraph 15(e) of the Rules provides that if after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at RDNH, or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The Rules, paragraph 15(e), call for this analysis even when the Respondent has not expressly requested a finding of abuse – seeTimbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork, WIPO Case No. D2013-1603.
The Panel considers that one situation where a finding of RDNH is appropriate is where a Complaint has been presented in a manner which is misleading and inaccurate. A Panel should be able to rely upon the certification that a Complainant gives that "the information presented in this Complaint is to the best of the Complainant's knowledge complete and accurate". The Panel considers this is a case where such certification could not properly have been given, for the following reasons:
a. The Complaint is based upon an express allegation that the Respondent was operating a PPC website linked to the Disputed Domain Name. That allegation is simply wrong. The Respondent's Website is that of a bona fide cleaning business and does not contain any PPC links at all. The Panel does not know how that allegation came to be made but is concerned that it was manifestly misleading.
b. In presenting its case in this manner the Complaint simply ignored the fact that the Respondent was obviously operating a bona fide cleaning business. Given that the words "any" and "clean" are ordinary English words and descriptive in nature this was itself misleading.
c. The Complainant does not appear to have made any investigations to ascertain the true position with regard to the Respondent and his business. Had it done so it would have realised how misleading its case was.
d. The Complainant also failed to point out that its registered trademarks were for the word(s) in question in combination with images of those word(s), and failed to consider the likely limitation to the scope of it rights that this involves.
e. Search results were relied upon by the Complainant which were presented in a way which suggested they were searches of the Respondent's Website or were in some way generated by the Respondent's Website or as a result of something he had done. As far as the Panel can determine this was not the case.
f. The Complaint also alleged that the Respondent had previously been found to have registered and used a domain name in bad faith in a previous proceeding under the Policy. This was incorrect and again misleading.
Given the relevant facts, the nature of the Policy and the fact that the Complainant was advised by a firm of patent and trade mark attorneys this was a case which should never have been presented in the manner it was. The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied. The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Nick J. Gardner
Date: April 28, 2017