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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Terminix International Company v. Site Admin, Acme Mail

Case No. D2016-1696

1. The Parties

The Complainant is The Terminix International Company of Memphis, Tennessee, United States of America ("United States"), represented by Partridge Partners PC, United States.

The Respondent is Site Admin, Acme Mail of Miami, Florida, United States.

2. The Domain Name and Registrar

The disputed domain name <terminx.com> is registered with DNC Holdings, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 19, 2016. On August 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 2016, 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 August 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 16, 2016.

The Center appointed Andrew J. Park as the sole panelist in this matter on September 28, 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, The Terminix International Company, is the leading provider of pest control services in the world, serving millions of customers across twenty-two countries. It has been using the TERMINIX mark in connection with pest control services since 1928. The Complainant is the owner of numerous marks worldwide containing or compromising the term TERMINIX, including United States Registration No. 1,404,366 for TERMINIX, filed on December 18, 1985, and registered on August 5, 1986, and the Complainant is the owner of the domain name <terminix.com>.

The disputed domain name was registered on October 26, 2000 and resolves to a website that has click-through links to websites of pest control companies other than the Complainant.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name should be transferred to the Complainant because:

1) the disputed domain name is a close misspelling of, and is therefore confusingly similar to the Complainant's registered TERMINIX trademark;

2) the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is neither affiliated with nor related to the Complainant in any way, nor is the Respondent licensed by Terminix or otherwise authorized to use the TERMINIX mark. Further, the Respondent is not generally known and could never be known by the disputed domain name, and without any trademark or service mark rights in the name or mark, the Respondent lacks rights or legitimate interests in the disputed domain name.

3) the disputed domain name was registered and is being used in bad faith. The Complainant contends that its TERMINIX mark is a well-known mark and that the Respondent registered and began using the disputed domain name long after the Complainant's adoption and registration of its TERMINIX mark. Thus, the Respondent had constructive and actual knowledge of the Complainant's TERMINIX mark. The Respondent also used the disputed domain name in bad faith by exploiting the likelihood of confusion for commercial gain on the grounds that the Respondent's web site contains advertisements with click-through links.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements which must be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (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.

The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant mark and, second, is the disputed domain name identical or confusingly similar to that mark.

The Panel finds that the Complainant has established that it has registered rights to the mark TERMINIX.

The disputed domain name is nearly identical to the Complainant's trademark TERMINIX. The only distinction between the word that compromises the disputed domain name "terminx" and the Complainant's TERMINIX mark is the deletion of one letter towards the end of the word in the disputed domain name, namely the letter "i." Such slight distinction makes no notable difference in the pronunciation, appearance, or meaning between the word in the disputed domain name and the Complainant's TERMINIX mark.

The addition of a generic Top-Level Domain such as ".com" after a domain name is technically required. Thus, it is well established that such element may be typically disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is nearly identical to the Complainant's mark.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Complainant is required to at least make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.

Here, the Panel finds that the Complainant has made out a prima facie case.

As summarized above, the Complainant contends that the Respondent has no rights nor legitimate interests in the disputed domain name on the grounds that the Respondent has no affiliation nor relation to the Complainant and no authorization to use the TERMINIX mark; that the Respondent is not known by the disputed domain name; and that the Respondent is not using the disputed domain name for a bona fide offering of goods or services or for legitimate noncommercial or fair use.

Based on the facts of record, the Panel is unable to find any reasonable basis upon which the Respondent could be said to have any rights or legitimate interests in respect of the disputed domain name, and the Respondent has failed to demonstrate its rights or legitimate interests in the disputed domain name.

Accordingly, pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds under the circumstances that the Complainant has established that the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

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

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

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

The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(iv), by using the disputed domain name to intentionally attract, for 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 its website.

As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to rebut the Complainant's allegations of the Respondent's bad faith registration and use of the disputed domain name.

Nevertheless, the Panel still has the responsibility of determining which of the Complainant's assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

The Panel finds that the Complainant's TERMINIX mark is widely known; that the word composing the disputed domain name is nearly identical to the TERMINIX mark; and that the disputed domain name contains advertisements with click-through links to competitors of the Complainant and to other companies that are in the same business as the Complainant. It is therefore very unlikely that the Respondent, at the time of registration or acquisition of the disputed domain name, was not aware of the Complainant's trademark.

Bad faith can be inferred based on the fame of the Complainant's mark, such that the Respondent was aware or should have been aware of the Complainant's mark and claims of rights thereto (particularly in view of the Complainant's use of its mark on the Internet). The Panel finds it highly doubtful that the Respondent would have registered the disputed domain name without having knowledge of the Complainant. The registration of a domain name that is similar to a distinctive trademark by the respondent, when the respondent has no relationship to that mark, may be suggestive of bad faith (see Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

Accordingly, the evidence, which is not rebutted by the Respondent, shows that the Respondent knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant's trademark, in order to attract Internet users to its website for commercial gain.

The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <terminx.com>, be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: October 14, 2016

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