WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Southern Wrecker & Recovery, LLC v. Joseph Jacquin
Case No. D2014-0845
1. The Parties
Complainant is Southern Wrecker & Recovery, LLC of Jacksonville, Florida, United States of America (the "USA"), represented by PCT Law Group, PLLC, USA.
Respondent is Joseph Jacquin of St. Augustine, Florida, USA, self-represented.
2. The Domain Name and Registrar
The disputed domain name <southernwreckerandrecovery.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 21, 2014. On May 22, 2014, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On May 22, 2014, the Registrar transmitted by e-mail 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 May 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 17, 2014. On June 17, 2014, the Center received an informal communication from Respondent.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 20, 2014. 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.
Later on June 20, 2014, Respondent e-mailed the Center and repeated his prior statement that he had just been dealing with a personal issue and that "my team is work on this." The Panel construed this comment as some sort of request for additional time, and therefore the Panel issued Procedural Order No. 1 on June 25, 2014, which stated:
"The Panel has not yet decided whether to consider any submission from Respondent, since it is not past the deadline. In any event, the Panel certainly will not consider anything from Respondent if it is not received by the Center on or before Friday, June 27, 2014.
If Respondent intends to submit something, it should do so no later than June 27, 2014."
Nothing was received from Respondent by June 27, 2014.
On July 2, 2014 Respondent sent an email communication to the Center, stating: "We are writing this letter in response to the complaint regarding the above mentioned domain name. I would like to take a moment and point out that after I received the original complaint I discontinued the use of the domain name "southernwreckerandrecovery.com" however; I chose to do this in good faith. According to the State of Florida, Southern Wrecker and Recovery, LLC has not officially filed to trademark their name or any variation thereof. This entitles anyone to purchase the domain name "southernwreckerandrecovery.com". In regards to the ad words, anyone, including Southern Wrecker and Recovery, LLC have full rights to choose any ad word they wish, including Joey's Towing, competition is at the heart of any business and utilizing ad words is within the realm of fair competition. Considering I have chosen, in good faith, to discontinue its use I believe our matter is resolved. If I can assist you any further please feel free to contact me."
4. Factual Background
Complainant is a towing, wrecking, and recovery service based in Jacksonville, Florida. Founded in 2001, Complainant provides its services in various locations throughout Florida, including St. Augustine, Florida, where Respondent is located.
Complainant has offered its services under the common law mark SOUTHERN WRECKER AND RECOVERY for several years. Annexed to the Complaint are various examples of Complainant's advertising and promotional efforts using the SOUTHERN WRECKER AND RECOVERY mark. Complainant also operates a website at the domain name <southernwrecker.com> since 2004.
Respondent operates a towing service in the same part of Florida as Complainant, under the name Joey's Towing. The Domain Name was registered on June 7, 2013. From mid-2013 until March 2014, the website to which the Domain Name resolved offered towing services under the name "Joey's Towing". The website advertised that Joey's Towing service extended to Florida cities such as Jacksonville and St. Augustine, among others also served by Complainant.
Shortly after the Domain Name was registered, Complainant's CEO called Respondent, who, according to the Complaint, readily acknowledged that he was aware of Complainant's company and its SOUTHERN WRECKER AND RECOVERY mark. Complainant alleges that during that phone call Respondent refused to surrender the Domain Name, but offered to sell it to Complainant for USD 3,000. That offer was rejected.
In February 2014, Complainant's counsel sent Respondent a cease-and-desist letter. Complainant alleges that Respondent spoke with Complainant's lawyer after this letter was received. Again, Respondent refused to surrender the Domain Name.
At some point in March 2014, the Domain Name was redirected to a parking page which advertised the Domain Name as available at auction, with the current bid at USD 3,000.
5. Parties' Contentions
The salient facts upon which Complainant relies are set forth in the previous section. Complainant maintains that it has satisfied the three elements required under the Policy for a transfer of the Domain Name.
Respondent did not formally reply to Complainant's contentions.
On July 2, 2014, the Center received a communication from Respondent (see above in Section 3) in relation to this case. Notwithstanding Respondent's untimeliness, in the interests of fairness the Panel has deemed it appropriate to consider Respondent's late communication in rendering its Decision.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
There is sufficient evidence in the record to support Complainant's plausible and undisputed contention that it holds common law rights in the service mark SOUTHERN WRECKER AND RECOVERY. Respondent did not dispute this contention either in communications prior to this proceeding or within this proceeding.
The Domain Name is identical to the mark.
Accordingly, the Panel concludes that Policy paragraph 4(a)(i) has been satisfied by Complainant.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial 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.
It is undisputed that Respondent has not been authorized by Complainant to use the SOUTHERN WRECKER AND RECOVERY mark in any manner, and that the parties have no relationship. There is no evidence in the record that Respondent is commonly known by the Domain Name.
The Panel also finds that Respondent has not used the Domain Name in connection with a bona fide offering of goods or services. On the contrary, Respondent appears to have directed the Domain Name to a website where Respondent's own competing and geographically overlapping services were being offered to consumers, which use was discontinued upon notice of the present dispute – this indicates to the Panel that Respondent believed it was inappropriately targeting Complainant.
Accordingly, the Panel concludes that Policy paragraph 4(a)(ii) has been satisfied by Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with 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.
The Panel concludes that Respondent has registered and is using the Domain Name in bad faith within the meaning of Policy paragraphs 4(b)(1), 4(b)(iii), and 4(b)(iv). It is undisputed for this Panel that Respondent had Complainant's SOUTHERN WRECKER AND RECOVERY mark in mind when registering the Domain Name. It is also undisputed that the parties provide similar services in the same geographical area, and hence are competitors in the most basic sense. Respondent appears to have used the Domain Name to lure consumers to his own website and thereby attempt to siphon off business otherwise destined for his competitor, Complainant. This conduct violates both paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. Further, Respondent's apparent offer to sell the Domain Name to Complainant for USD 3,000, and later put it up for auction, is in the circumstances present here bad faith within the meaning of paragraph 4(b)(i).
Accordingly, the Panel concludes that Policy paragraph 4(a)(iii) has been satisfied by Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <southernwreckerandrecovery.com> be transferred to Complainant.
Robert A. Badgley
Date: July 3, 2014