WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Phoenix Marketing LLC v. PrivacyDotLink Customer 2406320 / PrivacyDotLink Customer 2406319 / James Lee
Case No. D2017-0945
1. The Parties
Complainant is Phoenix Marketing LLC of Santa Rosa, California, United States of America (“United States”), represented by Kelley Drye & Warren, LLP, United States.
Respondent is PrivacyDotLink Customer 2406320 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom / PrivacyDotLink Customer 2406319 Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom / James Lee of Camarillo, California, United States, represented by The Law Office of Eugene S. Suh, APC, United States.
2. The Domain Names and Registrar
The disputed domain names <1-800-janitor.com> and <1800janitor.com> are registered with Uniregistrar Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2017. On May 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 12, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 17, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on May 18, 2017.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on May 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2017. At Respondent’s request, the due date for Response was extended to June 23, 2017. The Response was filed with the Center on June 23, 2017.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on July 4, 2017. 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
Complainant provides vanity toll-free telephone numbers (e.g., 1-800-janitor) and also offers packages of marketing tools and products and service designs to various businesses. Complainant registered 1-800-janitor in the United States Patent and Trademark Office (“USPTO”) Supplemental Register on March 21, 2017 (U.S. Suppl. Reg. No. 5168631).
Based on the ICANN WHOIS record, Respondent registered the disputed domain names <1-800-janitor.com> and <1800janitor.com> on November 28, 2003. The registrations were updated on March 21, 2017, and the disputed domain names resolve to parked pages.
5. Parties’ Contentions
Complainant contends that it has common law trademark rights in 1-800-janitor based on its use of the phrase in the United States since 1996 in connection with its services. Complainant also claims trademark rights in 1-800-janitor based on its registration of that phrase in the USPTO Supplemental Register. According to Complainant, the disputed domain names are nearly identical to 1-800-janitor.
Complainant alleges that Respondent does not engage in the bona fide offering of goods or services as the disputed domain names resolve to parked pages.
Complainant bases its assertion that Respondent registered the disputed domain names in bad faith on the corollary allegation that Respondent registered the disputed domain names on March 21, 2017, shortly after the 1-800-janitor trademark registration issued. Complainant further alleges that Respondent has offered to sell the disputed domain names via auction for USD 12,000 each.
Respondent shows that the disputed domain names were registered on November 28, 2003, rather than in 2017, as claimed by Complainant. According to Respondent, Complainant has failed to provide evidence that it had rights in the trademark 1-800-janitor when Respondent registered the disputed domain names. Moreover, Respondent argues that Complainant has failed to supply evidence of bad faith registration as there is nothing in the record to establish that Respondent had actual notice of Complainant’s rights prior to Respondent’s registration of the disputed domain names.
6. Discussion and Findings
A. Identical or Confusingly Similar
Although Complainant shows that it has listed 1-800-janitor on the Supplemental Register, this is insufficient to establish Complainant’s trademark rights. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.2. Rather, Complainant must also provide evidence to support a finding that its purported trademark has acquired a secondary meaning. Here, however, Complainant offers nothing more than a bare allegation, devoid of supporting evidence. Similarly, although Complainant claims to have used 1-800-janitor in commerce since 1996, Complainant provides no facts in support. Accordingly, Complainant has not satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Given the deficiency in Complainant’s proofs as to paragraphs 4(a)(i) and 4(a)(iii), the Panel does not decide whether Respondent lacks rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Complainant cannot establish bad faith registration because it miscalculated the registration dates (by more than 13 years) for the disputed domain names. Based on that miscalculation, Complainant attempts to establish Respondent’s bad faith registration in 2017, rather than in 2003. It offers no argument or evidence to support a finding of bad faith registration in 2003, the year when Respondent actually registered the disputed domain names.
Accordingly, the Panel finds that Complainant has failed to satisfy paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Lawrence K. Nodine
Date: July 18, 2017