WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The ServiceMaster Company v. Maud McGuckin d/b/a Maud's Merry Maids
Case No. DIE2011-0001
1. The Parties
The Complainant is The ServiceMaster Company of Memphis, Tennessee, United States of America, represented by an internal representative.
The Respondent is Maud McGuckin d/b/a Maud's Merry Maids of Dublin, Ireland, represented by an internal representative.
2. The Domain Name and Registrar
The disputed domain name <merrymaids.ie> is registered with IE Domain Registry Limited (IEDR).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2011. On April 19, 2011 and May 3, 2011, the Center transmitted by email to IEDR a request for registrar verification / clarification in connection with the disputed domain name. On April 19, 2011 and May 9, 2011, IEDR transmitted by email to the Center its verification response confirming that the Respondent is listed as the Respondent and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 9, 2011. The specified due date for Response was May 29, 2011. The Response was filed with the Center on May 19, 2011.
Pursuant to the Complainant’s requests, the administrative proceeding was suspended on June 1, 2011 and June 29, 2011. Upon the Complainant’s request, the Center reinstituted the proceeding on August 1, 2011.
The Center appointed John Gaffney as the sole panelist in this matter on August 15, 2011. 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 owns several consumer services brands in the United States of America and in the United Kingdom (“UK”) through its subsidiary ServiceMaster Ltd.
The Complainant's MERRY MAIDS brand provides cleaning services via franchisee owned businesses.
In conjunction with its services, the Complainant currently owns two Community Trade Mark (“CTM”) registrations for MERRY MAIDS and design and MERRY MAIDS (“MERRY MAIDS mark”). The CTMs were issued in 1999 and 2002, respectively.
The Respondent provides house cleaning services under the business name “Maud’s Merry Maids”. The business name was registered in the Companies Registration Office on February 18, 2008.
The Respondent registered the disputed domain name on February 20, 2008.
5. Parties’ Contentions
The Complainant states that its “Merry Maids” brand is the largest residential cleaning franchise operation in the world, has locations on three continents, and employs approximately 8,000 cleaning professionals via over 1600 franchise and company owned locations, including over 100 franchises in the UK and Ireland.
The Complainant has provided evidence that its “Merry Maids” brand was ranked the top franchise in the residential cleaning industry by Entrepreneur Magazine for several years, including most recently in 2006. Currently, Entrepreneur Magazine currently ranks Merry Maids number 43 in its annual Franchise 500, and number 39 in America's top global franchises.
In conjunction with its services, Complainant currently owns two CTM registrations for it MERRY MAIDS mark:
MERRY MAIDS and design, CTM Reg. No. 172,700, issued July 1, 1999 (claiming seniority in Ireland to Reg. No. 153,108 granted February 27, 1991, and Reg. No. 153,107 granted May 27,1991).
MERRY MAIDS, CTM Reg. No. 2,244,614, issued August 7, 2002.
The Complainant's MERRY MAIDS mark was registered for residential maid services in 1999, and both commercial and general housekeeping services in residential and commercial locations, including related maid services and mopping, dusting, washing, vacuuming services in 2002.
The Complainant states that is has also registered the following domain names: <merrymaids.com>, <merrymaids.net>, <merrymaids.mobi>, <merrymaids.jobs>, <merrymaids.co.uk>, <merrymaids.eu> and <merrymaids.asia>, among others. These domain names are said to allow current and potential customers to contact Complainant and learn about and request its services or inquire about franchise opportunities. The Complainant states that since Merry Maids registered the <merrymaids.com> domain name in 1994, its domain names have grown to be an important component of Merry Maids' national and international identity, and further enhances Merry Maids' prestige.
The Complainant asserts that the disputed domain name incorporates the MERRY MAIDS mark and is in direct competition with the Complainant's business. It states that the Respondent is not authorized, via license or any other form of permission, to use the MERRY MAIDS mark. Neither is the Respondent authorized to use the Mark in the disputed domain name or otherwise use the MERRY MAIDS mark in connection with the Complainant's goods or services.
The Complainant has provided evidence that it met with the Respondent on or about late 2006 or early 2007 in response to the Respondent's application to purchase a Merry Maids franchise. The Respondent decided not to proceed with the application. The Complainant asserts that clearly the Respondent was aware of the MERRY MAIDS mark.
The Complainant asserts that the disputed domain name is identical to the MERRY MAIDS mark, to which the Complainant has established rights via CTM registrations. The Complainant contends that it is incomprehensible that the Respondent would start a business without undertaking some due diligence regarding its business name. Had the Respondent searched the CRO database, it would have discovered at least three active Merry Maids registrations. These listings were registered in 1998, 2003, and 2005 in Limerick City, County Claire, and Dublin, respectively. The Complainant states that the Limerick City and County Claire businesses are existing franchisees. The Complainant asserts that minimal due diligence would have uncovered its preexisting rights in the MERRY MAIDS mark and its domain name registrations.
The Complainant notes that the Respondent's business apparently incorporates the Respondent's first name. However, that is immaterial to the evaluation of the Respondent's legitimate rights or interests in the disputed domain name since the disputed domain name does not also incorporate the Respondent's name. The Respondent has no authority to use the mark and has therefore made no bona fide use of the mark. As such, the Respondent has no legitimate rights or interests in the disputed domain name.
The Complainant asserts that its Merry Maids franchise is among the leading residential franchise operations in the world. Given that the Respondent provides the same services as the Complainant, it borders on the inconceivable that the Respondent could have begun using the MERRY MAIDS mark with no foreknowledge of the Complainant's rights therein. In the Complainant’s view, this infers that the disputed domain name was registered in bad faith (referring to Alstom v. Yulei, WIPO Case No. D2007-0424).
The Complainant argues that if the Respondent is “blind to Complainant's rights in its Merry Maids trademark, that blindness is willful”. At the very least, the Respondent was put on notice of the Complainant's mark via the cease and desist letters that the Complainant sent to the Respondent. More telling in the Complainant’s submission is the fact that the Respondent previously specifically inquired regarding opportunities to operate a franchise under the MERRY MAIDS mark. The Complainant contends that the Respondent was tacitly aware of the MERRY MAIDS mark, deliberately registered the disputed domain name comprised of the mark, and has used its domain to directly compete with Complainant's under the disputed domain name and using a business name which also incorporates the mark (Kaspersky Lab Zao v. Jan Zeleznak, WIPO Case No. DIE2010-0001). The Respondent's actions thus show deliberate and willful bad faith in registering and using the disputed domain name.
The Complainant argues that purpose of the disputed domain name is clearly to promote the Respondent’s cleaning services and to attract consumers. It has provided evidence that a search at “www.google.com” for the terms “Merry Maids Ireland” returns links to the disputed domain name as the top two hits. Similarly, a search at “www.google.ie” for the term “Merry Maids” lists links to the disputed domain name as the top three hits. The Complainant argues that the disputed domain name and the Respondent’s business dilutes the MERRY MAIDS mark. The disputed domain name is also likely to confuse a consumer searching for the Complainant' s services offered under its long protected MERRY MAIDS trademark. The Complainant argues that such misleading use of the mark constitutes use of the disputed domain name in bad faith.
The Respondent states that "Maud's Merry Maids" is “an Irish owned and operated company which has built a reputation over many years based on ”quality, value for money and good customer service.” (The Respondent has not provided, however, evidence that she actually owns a company registered in the Republic of Ireland. This is not material in any case.)
The Respondent asserts that in order to underline their independence from any other group that they stated quite clearly on our web site that: "Maud's Merry Maids" is an Irish owned and operated company which has built a reputation over many years based on Quality, Value for money and Good Customer service.”
She asserts that there is no effort to mislead customers/potential customers
The Respondent accepts that at the time she and her husband were aware that the name MERRY MAIDS was registered in Ireland dating as far back as 1975 when it was registered by Cadbury Ireland. She states that it was her and her husband’s understanding that the Complainant “gave up all rights to the name in Ireland when they failed to pay there [sic] admission to the Irish Patents office”. (It is not apparent what the Respondent is referring to in this regard, but in any case it is not material to the determination of this administrative proceeding). She asserts (but provides no evidence) that they sought and gained permission from Cadbury Ireland and as there was no company associated with the Complainant operating in Ireland, they registered “Maud’s Merry Maids”. She states that it was also her belief at the time that “we had changed the name sufficiently not to cause any fuss”.
The Respondent asserts that she has been made aware through this administrative proceeding that the Complainant has registered the MERRY MAIDS mark in Europe and that this registration covers Ireland, a fact that she says she was not aware of beforehand. The Respondent accepts that the Complainant has European rights for MERRY MAIDS name. However, she contends that with respect to registration under OHIM classes 3,37 and 42, not all products and services offered under the Maud’s Merry Maids Brand are covered in these categories.
The Respondent asserts (but provides no evidence) that on registration of the disputed domain name, they “made the UK ServiceMaster group fully aware [n]o attempt was made until now to notify us of there hold on the name Instead [sic] between February 2008 and now we have invested over €120,000 in promoting the brand in Ireland”.
The Respondent states that the website operated under the disputed domain name accounts for 60% of current business and “[s]hould the URL merrymaids.ie be transferred then this will have severe consequences on our company which in turn will lead to many lay offs in a environment and country and community which has had its fair share of economic turmoil over the last two years.”
She argues that the Complainant had every opportunity to register the disputed domain name prior to the date of its registration by the Respondent but failed to do so.
The Respondent asserts that the Complainant has not provided any evidence to support the assertion that it has built up a substantial body of goodwill in this name in Ireland.
The Respondent asserts rights in law and legitimate interests in respect of the disputed domain name due to the “undisputed long use and Interest [sic] in the name”.
She asserts that there was no attempt to use the disputed domain name in bad faith.
6. Discussion and Findings
Paragraph 1 of the IEDR Policy places on the Complainant the obligation to prove that:
1.1.1 a domain name is identical or misleadingly similar to a Protected Identifier in which the Complainant has rights; and
1.1.2 the Registrant has no rights in law or legitimate interests in respect of a domain name; and
1.1.3 a domain name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
The first condition in paragraph 1.1 of the Policy is that the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights.
Pursuant to paragraph 1.3.1 of the Policy, protected identifiers include “trade and service marks protected in the island of Ireland”.
The Complainant has proved that it owns two CTMs in respect of the MERRY MAIDS mark. The CTMs are protected in the island of Ireland. And so each is a protected identifier.
Where a protected identifier is proved to exist, a complainant need not also prove the existence of goodwill therein in Ireland.
The Panel finds that the disputed domain name is identical to the protected identifiers in which the Complainant has rights.
B. Rights or Legitimate Interests
The second condition in paragraph 1of the Policy is that the Respondent has no rights in law or legitimate interests in respect of the disputed domain name.
Paragraph 3.1 of the Policy lists three non-exhaustive factors that can be considered as evidence of rights or legitimate interests in the disputed domain name.
Paragraph 3.1.1 of the Policy provides:
“…where the Registrant can demonstrate that, before being put on notice of the Complainant's interest in the domain, it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services or operation of a business”.
Neither paragraph 3.1.2 nor paragraph 3.1.3 applies because the disputed domain name does not correspond to the personal name or pseudonym of the Respondent nor does it include a geographical indication.
The Respondent registered the business name, Maud’s Merry Maids, shortly before it registered the disputed domain name.
The registration of the business name did not of itself confer on the Respondent rights or legitimate interests for the purpose of the Policy.
For the reasons given in the following section 6.C, the Panel finds that the Respondent was on notice of the MERRY MAIDS mark well before it registered the business name, Maud’s Merry Maids, in February 2008.
On the Respondent’s own case, she did not invest in the Maud’s Merry Maids brand until February 2008. And she has provided no evidence of investment since that date.
The Complainant states that it has not licensed or otherwise authorized the Respondent to use its MERRY MAIDS mark. The Respondent has not contradicted this.
The Respondent claims that the UK ServiceMaster group was made fully aware of the registration of disputed domain name but she has not provided any evidence to support this assertion.
The Panel finds that the Respondent has no rights in law or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The third condition in paragraph 1 of the Policy is that the disputed domain name has been registered or is being used in bad faith.
The Complainant asserts, “it borders on the inconceivable that Respondent could have begun using the MERRY MAIDS mark with no foreknowledge of Complainant's rights in the Mark”.
The Complainant also states, “[i]f Respondent is blind to Complainant's rights in its Merry Maids trademark, that blindness is willful.”
The Panel notes that some panels have applied a concept of willful blindness in UDRP cases as a basis for finding bad faith, holding that a respondent must accept the consequences of turning a blind eye to any third-party trademarks through failure to conduct adequate searches. (See paragraph 3.4, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") ).
It is not necessary for the Panel to decide whether it is appropriate to apply the concept of willful blindness in the present case.
The Complainant has proved that the Respondent had prior notice of the Complainant’s mark. It has provided copies of two signed statements averring that the Respondent inquired about opportunities to operate a franchise under the Merry Maids brand well before she registered the disputed domain name. The Respondent has not sought to challenge those statements.
The Panel is therefore satisfied that the Respondent was aware of the MERRY MAIDS mark when she registered the disputed domain name and concludes that it is highly probable that the Respondent chose the disputed domain name with the Complainant’s MERRY MAIDS mark in mind.
The Panel finds that the disputed domain name was registered by the Respondent in bad faith.
Paragraph 2.1 of the Policy specifies six non-exhaustive factors that may be considered as evidence of registration or use in bad faith. The Complaint indicates that the Complainant also seeks to rely on, among other things, sub-paragraphs 2.1.4 and 2.1.5. These provide:
“2.1.4 where the Registrant has, through its use of the domain name, intentionally attempted to attract Internet users to a web site or other on-line location by creating confusion with a Protected Identifier in which the complainant has rights;
2.1.5 where the domain name is used in a way that is likely to dilute the reputation of a trade mark or service mark in which the complainant has rights;”
In light of its finding that the disputed domain name was registered by the Respondent in bad faith, it is unnecessary for the Panel to find in relation to the alleged bad faith use thereof.
For all the foregoing reasons, in accordance with paragraphs 5.1 of the Policy and 14 of the Rules, the Panel orders that the domain name <merrymaids.ie> be transferred to the Complainant.
John P. Gaffney
Dated: August 25, 2011