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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Berkeys LLC v. Registration Private, Domains By Proxy, LLC / Billy Stevens, Four Stevens Investments

Case No. DCO2020-0024

1. The Parties

Complainant is Berkeys LLC, United States of America (“United States” or “U.S.”), represented by Jackson Walker, LLP, United States.

Respondent is Registration Private, Domains By Proxy, LLC, United States / Billy Stevens, Four Stevens Investments, United States.

2. The Domain Name and Registrar

The disputed domain name <berkeys.co> 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 4, 2020. On May 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 7, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 8, 2020.

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 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2020. Respondent did not submit any response. Accordingly, the Center notified the parties of Respondent’s default on June 11, 2020.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on June 23, 2020. 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 is a provider of plumbing, heating and air-conditioning services in the Dallas, Texas area. It is the assignee of the BERKEYS Mark (the “Mark”), which has been used in connection with this business since 1975.

Complainant is the proprietor of United States Trademark Registration No. 3840571 for BERKEYS (word mark), registered on August 31, 2010 for services in class 37. Complainant operates its primary business website at the domain name <www.berkeys.com>.

The disputed domain name was registered by Respondent on August 20, 2018. It currently redirects to a website at <billygo.com> offering plumbing, heating, and air-conditioning services in the Dallas, Texas area.

5. Parties’ Contentions

A. Complainant

Under the first element, Complainant states that it and its predecessor in right has been offering services related to plumbing, air conditioning, and heating services to homeowners in the Dallas / Fort Worth, Texas area under the BERKEYS mark since 1975. Complaint has conducted its business under that name, advertises under the name BERKEYS and maintains its social media presence under that name. Complainant owns the U.S. trademark registration for the BERKEYS Mark and uses the Mark in commerce, and it has acquired common law rights in the trade name BERKEYS. The disputed domain name contains the BERKEYS Mark in its entirety, and is therefore identical and confusingly similar to the BERKEYS Mark.

Under the second element, Complainant states that Respondent has no rights or legitimate interests in the disputed domain name. Respondent, which operates a business under the name of “BillyGo”, has no registered trademark rights or trade names corresponding to the disputed domain name. Respondent is not a licensee of Complainant nor has Respondent been authorized to make any use of the BERKEYS Mark. There are no circumstances set out in paragraph 4(c) of the Policy that would demonstrate Respondent’s rights or legitimate interests in the disputed domain name. The CEO of BillyGo is a former executive at Complainant’s company and BillyGo is a competitor in Complainant’s market. The use of the disputed domain name by Respondent is intended to divert users to the BillyGo website by using the BERKEYS name and Mark.

Under the third element, Complainant states that Respondent or BillyGo, or its agent or employee, registered and is using the disputed domain name in bad faith pursuant to paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. Complainant owns the registered trademark rights in the BERKEYS Mark, and use of the Mark dates to 1975. The trademark was registered on August 31, 2010. Complainant’s rights in the Mark therefore predate the registration of the disputed domain name. Respondent has no current business relationship with Complainant and has not been authorized to use the BERKEYS Mark in a domain name or otherwise. The BillyGo business was launched on August 20, 2018, the same day that the disputed domain name was registered. Complainant therefore submits that Respondent had knowledge of Complainant and registered the disputed domain name in bad faith.

Respondent intentionally attempted to attract, for commercial gain, Internet users to the BillyGo website by creating a likelihood of confusion with Complainant’s BERKEY Mark and redirecting users to the BillyGo website. Respondent has used a reproduction of Complainant’s Mark to create confusion and divert Internet users to its website. Finally, Respondent made use of a privacy shield, contributing to the accumulation of elements pointing to bad faith registration and use of the disputed domain name.

Complainant requests transfer of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the disputed 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 disputed domain name; and

(iii) Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the BERKEYS Mark through registrations and use in the United States, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”), section 1.2.1.

In comparing Complainant’s BERKEYS Mark with the disputed domain name <berkeys.co>, the Panel finds that the disputed domain name is identical with the Mark. The disputed domain name contains the Mark in its entirety.

Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”

It is the well-established view of UDRP panels that the addition of the Top-Level Domain (“TLD”), “.co” in the current case, to the disputed domain name does not prevent the disputed domain name from being identical or confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, 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) Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The circumstances stated in the Complaint and evidence in support set forth in the Annexes to the Complaint indicate that Respondent has no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, which is identical to Complainant’s BERKEYS Mark, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1.

The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the BERKEYS Mark with permission of Complainant. Rather, the record supports Complainant’s express assertion that such permission does not exist. Complainant’s rights in the BERKEYS Mark predate the registration of the disputed domain name. The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

Respondent, in failing to timely file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain name. Considering the identity between Complainant’s Mark and the disputed domain name and the fact that the disputed domain name redirected Internet user to a website offering services identical to those offered by Complainant, there can be no finding or rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds bad faith under paragraph 4(b)(iii) and (iv) of the Policy. The record in the case demonstrates that Respondent chose the disputed domain name deliberately for the purpose of impersonating or attempting to create an association with Complainant. Complainant’s rights in the BERKEYS Mark significantly predate the registration of the disputed domain name. The disputed domain name contains Complainant’s Mark in its entirety, and, according to statements made by Complainant, Respondent was previously an employee of Complainant. The Panel finds that the registration was intended primarily to disrupt the business of a competitor and that Respondent has registered a domain name to attract, for commercial gain, Internet users to its website by redirecting the domain name to Respondent’s website. See WIPO Overview 3.0, sections 3.1.3 and 3.1.4.

Having established that the disputed domain name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain name. The Panel finds that Respondent has demonstrated bad faith use in using the disputed domain name to redirect to a website offering services identical to Complainant’s directed at consumers in the same geographic area, in circumstances under which Respondent was clearly aware of Complainant’s rights in the BERKEYS Mark. Respondent shielded his identity by using a privacy service when registering the disputed domain name.

Respondent has failed to file any response or provide any evidence of actual or contemplated good faith use, and the circumstances do not make any such use plausible.

The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.

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, <berkeys.co>, be transferred to the Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: July 7, 2020

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