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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Coit Services, Inc. v. Matt White, Arizona Carpet & Tile Cleaning

Case No. D2014-1308

1. The Parties

The Complainant is Coit Services, Inc., of Burlingame, California, United States of America (“U.S.”), represented by Dentons US LLP, U.S.

The Respondent is Matt White, Arizona Carpet & Tile Cleaning, of Laveen, Arizona, U.S. (individually and collectively the “Respondent”).

2. The Domain Name and Registrar

The disputed domain name <coit.cleaning> (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 July 30, 2014. On July 31, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 31, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 proceeding commenced on August 5, 2014. Particularly, Notice of the proceeding along with the Complaint and related documents was transmitted to the Respondent’s e-mail address, as listed in the contact details of the Domain Name registration, as well as a Written Notice to the Respondent’s postal address by the Center. The Written Notice was not deliverable to the Respondent’s postal address. In accordance with the Rules, paragraph 5(a), the due date for the Respondent to file a response was August 25, 2014. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent’s default on August 27, 2014.

The Center appointed Marylee Jenkins as the sole panelist in this matter on September 4, 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.

4. Factual Background

The Complainant bases the Complaint on six U.S. trademark registrations for the mark COIT, one U.S. trademark registration for the mark COIT COIT COIT and Design and two California state trademark registrations for the mark COIT for use in connection with a variety of goods and services, including stone tile and grout cleaning, polishing, sealing and restoration services; cleaning services for floor and window coverings, upholstery and air ducts; and, cleaning and treating draperies and fabric window coverings (individually and collectively the “Complainant’s Mark”) and has used the mark COIT in the U.S. since at least as early as 1950. The Complainant has also owned the domain name <coit.com> since 1995 and operates a web site at “www.coit.com”.

With respect to this dispute, the Domain Name <coit.cleaning> was registered on July 10, 2014 to the Respondent and is set to expire on July 10, 2016. The web page accessible at the Domain Name is a parked page of the Registrar.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is identical or confusingly similar to the Complainant’s Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith by the Respondent to create a likelihood of confusion with the Complainant’s Mark and with the Complainant as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and to prevent the Complainant from enjoying the goodwill associated with the Complainant’s Mark. Particularly, the Complainant alleges that the Respondent is using the Domain Name intentionally to attract for commercial gain Internet users to the Respondent’s website.

The Complainant argues that the Domain Name is confusingly similar to the Complainant’s Mark because it consists entirely of the Complainant’s Mark and only differs from the Complainant’s Mark because of the addition of the generic Top-Level Domain (“gTLD”) “cleaning”. The Complainant argues that the addition of the gTLD “cleaning” does not make a significant legal difference between the Complainant’s Mark and the Domain Name.

The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Name because the Domain Name does not correspond to the name of the Respondent; the Respondent has never been known under the Domain Name and has never asked for or been authorized by the Complainant to use the Complainant’s Mark in any manner, including as a domain name; and the Respondent has no relationship with the Complainant. The Complainant argues that the Respondent’s registration of the Domain Name improperly trades on the Complainant’s goodwill in its COIT mark and creates a likelihood of confusion among the public by falsely suggesting that the Complainant is the source, sponsor, affiliate or endorser of the Respondent and/or the Domain Name and/or any websites advertised at or linked to the Domain Name, including websites offering services in competition with the Complainant. The Complainant argues that the Respondent has registered the Domain Name to prevent the Complainant from enjoying the goodwill associated with the Complainant’s Mark and to reap commercial gain from misleading consumers seeking the Complainant’s website and diverting them to the Respondent’s website.

The Complainant argues that the Domain Name was registered in bad faith. The Complainant argues that the Respondent had actual and constructive knowledge of the Complainant’s Mark when the Respondent registered the Domain Name. The Complainant presented evidence that the Respondent had purchased adwords for the term “coit” from Google and made reference to the Complainant in the Respondent’s adwords appearing in Google’s search results. The Complainant contends that the Respondent had constructive notice of the Complainant’s Marks because of the Complainant’s provision of services in the Phoenix, Arizona area and because of the Complainant’s U.S. trademark registrations for the Complainant’s Marks.

The Complainant also argues that the Domain Name is being used in bad faith. The Complainant argues that the Respondent is using the Domain Name to create confusion and to mislead consumers into falsely believing that a relationship of source, sponsorship or endorsement exists between the Complainant and the website located at the Domain Name. The Complainant contends that the Respondent is using the Domain Name in a manner to capture traffic from consumers looking for the Complainant’s website and to direct such consumers to the Respondent’s website. The Complainant presented evidence that the Respondent is using the Domain Name to link to a website with sponsored links to websites offering products and services that compete with the Complainant and argues that the Respondent likely receives commercial gain from such use of the Domain Name.

B. Respondent

The Respondent did not file a response with respect to the proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the domain name holder 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.

Under the Rules, paragraph 14(b), the Panel shall draw such inferences from the Respondent’s default as it considers appropriate. Nevertheless, the Panel may rule in the Complainant’s favor only after the Complainant has proven that the above-listed elements are present.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the Complainant’s Mark.

A review of the second-level domain of the Domain Name shows that it consists of the Complainant’s Mark (i.e., COIT) in its entirety. The Domain Name differs from the Complainant’s Mark only by the addition of the gTLD “.cleaning”. The addition of a gTLD with a second-level domain that is identical to the Complainant’s Mark does not serve to distinguish the Domain Name from the Complainant’s Mark. On the contrary, the gTLD “.cleaning” is descriptive of the Complainant’s services and the addition of this gTLD to the second-level domain “coit” increases the likelihood of confusion between the Domain Name and the Complainant’s Mark.

Based on the Complainant’s Mark and long term use of the Complainant’s Mark, Internet users will clearly associate the Complainant with this Domain Name. In addition, the Complainant’s domain name registration for the domain name <coit.com> illustrates that it uses the Complainant’s Mark as the second-level domain of its own domain name, which would further lead Internet users to associate the Complainant with the Domain Name.

Based on these findings, the Panel determines that the Domain Name is confusingly similar to the Complainant’s Mark in which the Complainant has rights and that paragraph 4(a)(i) has therefore been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on her evaluation of all of the evidence presented, can demonstrate the holder’s rights to or legitimate interests in the domain name. These circumstances include:

(i) before any notice to the holder of the dispute, the holder’s 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 holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or

(iii) the domain name holder is 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.

The Complainant has shown that it has well and long established rights to the mark COIT at the time of the Respondent’s registration of the Domain Name on July 10, 2014. No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services. In addition, no evidence has been presented that the Respondent has ever been known by the Domain Name or has ever asked for or been given permission by the Complainant to register or use any domain name incorporating the Complainant’s Mark in any fashion or form.

The Complainant has presented sufficient evidence that the Respondent is using the Domain Name to link to a parked page that uses the Complainant’s Mark to link to websites of the Complainant’s competitors. The evidence presented by the Complainant and the Panel’s observations shows that the parked page accessible at the Domain Name with links to the Complainant’s competitors cannot be interpreted as any type of bona fide offering of goods or services or any legitimate noncommercial or fair use of the Domain Name by the Respondent.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the domain name holder includes, but is not limited to:

(i) circumstances indicating that the holder 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 website or location or of a product or service on the holder’s website or location.

In viewing the evidence provided by the Complainant in its entirety, the Panel finds that the Respondent had knowledge of the Complainant’s Mark and its rights therein at the time the Respondent registered the Domain Name. This finding is supported by the evidence showing that: (i) the Complainant owns many trademark registrations used in connection with cleaning and restorations services in the U.S. (the same jurisdiction in which the Respondent is located); (ii) the Respondent is apparently a competitor of the Complainant and the Complainant offers services in the same geographical location as the Respondent; (iii) the Domain Name was registered well after the first use in commerce and registration by the Complainant of the Complainant’s Mark; (iv) the second-level domain of the Domain Name is identical to the Complainant’s Mark with the gTLD “.cleaning” being descriptive of the Complainant’s services; (v) the Complainant registered its own domain name <coit.com> and has operated a web site at this domain name well prior to the registration date of the Domain Name; and (vi) the Respondent had knowledge of the Complainant’s Mark as it had purchased Google adwords consisting of the Complainant’s Mark and used the Complainant’s Mark in sponsored advertisements in the Google search engine. Along with the above finding that the Respondent has no rights or legitimate interests in the Domain Name, the Panel finds that the Respondent registered the Domain Name in bad faith.

The Complainant has further asserted that the Respondent acquired the Domain Name in bad faith primarily for the purpose of diverting Internet users looking for the Complainant to the Respondent’s site for its own commercial benefit. The Complainant alleges and has submitted uncontested evidence that the Respondent uses the Domain Name to link to a parked page of the Registrar that contains links to the Complainant’s competitors, from which the Respondent is presumed to receive click-through commissions or some other type of commercial gain.

Based upon the above, the Panel concludes that the Respondent registered and is using the Domain Name to intentionally attempt to attract for apparent commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s site or of services offered via the Respondent’s site.

The Panel therefore finds the Respondent’s actions constitute bad faith Domain Name registration and use and that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <coit.cleaning> be transferred to the Complainant.

Marylee Jenkins
Sole Panelist
Date: September 17, 2014

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