WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Friedman and Soliman Enterprises, LLC v. Gary Selesko, M&B Relocation and Referral, LLC
Case No. D2016-0800
1. The Parties
The Complainant is Friedman and Soliman Enterprises, LLC of Tampa, Florida, United States of America ("USA" or "US"), represented by K&G Law LLC, USA.
The Respondent is Gary Selesko, M&B Relocation and Referral, LLC of Ann Arbor, Michigan, USA.
2. The Domain Name and Registrar
The disputed domain name <junkusa.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 April 21, 2016. On April 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 18, 2016.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 25, 2016. 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 limited liability company organized under the laws of the US state of Maryland, with a principal office in Tampa, Florida, USA. The Complainant operates and franchises a moving, hauling, and storage company under the name "College Hunks Hauling Junk" and "College Hunks Moving" in 24 US states. The Complainant offers home and office moving services, junk removal, donation pickups, and related services.
The Complainant holds several US federal trademark registrations including the word "junk". The most relevant is 1-800-JUNK-USA, Registration Number 4063075 (registered November 29, 2011), a moniker that reflects the Complainant's toll-free telephone number and appears on one of the Complainant's websites <1800junkusa.com>.
The Complainant operates a website at "www.collegehunkshaulingjunk.com". The Complainant states that it formerly owned the Domain Name at issue in this proceeding but inadvertently allowed the registration to lapse.
The Domain Name is currently registered in the name of the Respondent, a limited liability company with a postal address in the US state of Michigan. The Respondent did not submit a Response in this proceeding, and it does not appear that the Respondent operates a website for its business. However, the same Respondent, with the same contact person, Mr. Selesko, appeared in a 2013 UDRP proceeding, United Parcel Service of America Inc. v. Gary Selesko, M&B Relocation and Referral, LLC, WIPO Case No. D2013-1555. There, the Respondent described its business as follows: the Respondent "purchases domains at various auctions and subsequently attempts to find secondary buyers for these newly acquired domains." The panel in that proceeding concluded that the Respondent registered and used the domain name <driveups.com> in bad faith.
The Domain Name resolves to the website of a direct competitor of the Complainant in the junk removal business, "www.1800gotjunk.com". That website is headed "1-800-GOT-JUNK?", a trade name for RBDS Rubbish Boys Disposal Service Inc., the Canadian company that operates "The World's Largest Junk Removal Service" as a franchise network in the US, Canada, and Australia. A perusal of the Complainant's website and the website associated with the Domain Name indicates that 1-800-GOT-JUNK? competes with the Complainant across the 24 US states where the Complainant offers its services.
5. Parties' Contentions
The Complainant argues that the Domain Name is confusingly similar to its registered 1-800-JUNK-USA trademark, and that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant contends that the Respondent selected the Domain Name to mislead Internet users for commercial gain, referring to the Complainant's mark.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
A. Identical or Confusingly Similar
The first element of the UDRP is "essentially a standing requirement" requiring "a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2. The Domain Name meets this test by comparison with the Complainant's registered trademark 1-800-JUNK-USA, considering that "JUNK-USA" is the distinctive portion of the mark and "1-800" simply represents a generic numerical prefix for toll-free telephone numbers in the US and Canada.
The Panel concludes that the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the 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 Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the 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 Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this issue shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
Here, the Complainant has made a prima facie case by establishing trademark rights in 1-800-JUNK-USA and showing that the Respondent used a confusingly similar Domain Name to redirect Internet users to a competitor's website. The Respondent has not come forward to offer evidence of rights or legitimate interests in the Domain Name. Thus, the Complainant prevails on the second element of the Policy.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith", including the following ("you" refers to a respondent):
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
This example fits the circumstances of this case, absent any proffered or logical alternative explanation. The Domain Name is confusingly similar to the Complainant's 1-800-JUNK-USA trademark, and the Respondent has not advanced any legitimate reason for selecting the Domain Name and using it to redirect traffic to the Complainant's direct competitor. The record does not indicate the nature of the relationship, if any, between the Respondent and the Complainant's competitor, but there is undeniably commercial use of the Domain Name. Under the circumstances, it is likely that the Respondent either has an arrangement with the competitor or perhaps hopes for one; the Respondent stated in a prior proceeding that it was in the business of purchasing and selling domain names to secondary buyers. In any event, it cannot be considered good faith to acquire a domain name that is confusingly similar to a company's trademark, after the company lets the registration lapse, and use it to mislead Internet users by redirecting traffic to the company's competitor.
The Panel concludes that the Complainant has established the third element of the Policy with regards to bad faith.
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 <junkusa.com> be transferred to the Complainant.
W. Scott Blackmer
Date: June 2, 2016