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Order (my) #HeatingOil : Massachusetts oil companies spat over #domain #UDRP

ZFBot

UDRP has been denied.

Winter isn’t over, and Boston is getting ready for yet another possible nor’easter right as March ends.

Heating oil is big business in Massachusetts and New England, and two companies, one from Mansfield outside of Boston, and one from Framingham, Massachusetts, got to fight over the domain OrderMyHeatingOil.com.

The “Boston” company, Wes Madan / United Oil Heat, Inc., is doing business as OrderMyOil.com and the Framingham company registered the domain OrderMyHeatingOil.com.

The ensuing UDRP shows how two companies can use two similar domain names for legitimate reasons.

The Complainant asserted they have common law rights to the name, which they don’t consider a generic. The Respondent in this UDRP stated that they purchased the domain “with full intent to provide bona fide goods or services, i.e. heating oil delivery. The domain name was not purchased in order to be sold, transferred or rented in any way and has never been offered to Complainant or anyone else for this purpose.”

Roberto A. Bianchi, Panelist, found that the domain name in question “lacks any originality” and denied its request for a transfer to the Complainant, as no instance of bad faith was found in its registration.

Full details of this decision follow:

Wes Madan / United Oil Heat, Inc., d/b/a OrderMyOil.com v. Orlando Enterprises

Claim Number: FA1801001769095

PARTIES

Complainant is Wes Madan / United Oil Heat, Inc., d/b/a OrderMyOil.com (“Complainant”), represented by Ryan E. Prophett of Prophett Law Office, LLC, Massachusetts, USA.” Respondent is Orlando Enterprises (“Respondent”), Massachusetts, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ordermyheatingoil.com>, registered with Network Solutions, LLC.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Roberto A. Bianchi as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 26, 2018; the Forum received payment on January 26, 2018.

On Jan 31, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the <ordermyheatingoil.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name.” Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN”s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On February 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent”s registration as technical, administrative, and billing contacts, and to postmaster@ordermyheatingoil.com.” Also on February 5, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent”s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on February 26, 2018.

On March 2, 2018, Complainant submitted an Additional Submission, which the Forum found to be compliant with Supplemental Rule 7.

On March 5, 2018, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Roberto A. Bianchi as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Wes Madan / United Oil Heat, Inc., d/b/a OrderMyOil.com, is a registered Massachusetts corporation and is in the business of delivering home heating oil, and previously offered service and maintenance of home heating systems. Complainant developed its <ordermyoil.com> domain name to be an e-commerce site pursuant to which customers can order their oil online for a discounted price. Complainant has common law rights in the ORDERMYOIL.COM mark dating back to its first use of the mark in commerce at least as early as August of 2008. Respondent”s <ordermyheatingoil.com> domain name is confusingly similar to Complainant”s ORDERMYOIL.COM mark, as the domain name consists entirely of the mark, merely adding the descriptive term “heating.” Indeed, there is evidence consumers have actually been confused by the domain name. See Ex. CC.

Respondent has no rights or legitimate interests in the <ordermyheatingoil.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the ORDERMYOIL.COM mark in any manner. Respondent”s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses Complainant”s logo and slogan to confuse Internet users and compete with Complainant. See Compl. Exs. Q and Y.

Respondent registered and is using the <ordermyheatingoil.com> domain name in bad faith. Respondent registered and uses the domain name to create confusion with Complainant”s marks for commercial gain. Further, Respondent clearly had actual knowledge Complainant and its rights at the time it registered and used the domain name.

B. Respondent

Respondent, Orlando Enterprises, Inc. aka Orlando Fuel Service has been a well-known, reputable discount heating oil dealer in the Metrowest area of Massachusetts since 1986. “In November of 2017, it launched the <ordermyheatingoil.com> domain name to support an online, self-service portal wherein customers could place their own order, answer necessary questions, and process payment. Respondent felt inclusion of the words “heating oil” in the domain name was important, as this is the term customers use in their search online for providers. Limiting the use of generic terms such as “order my” or “oil” from domain names would allow Complainant to monopolize the market. “With regard to actual confusion, one of the three phone calls Complainant asserts they have received was from a customer from Allston; which is a town in a zip code Respondent does not serve.

Respondent”s website at the <ordermyheatingoil.com> domain name is a legitimate website providing heating oil delivered to online consumers. The website is markedly different from Complainant”s, and was never intended to put forth the impression it was affiliated with Complainant in any way. See Resp. Ex. B. Further, Complainant”s claimed “slogan” is generic.

Respondent purchased the <ordermyheatingoil.com> domain name with full intent to provide bona fide goods or services, i.e. heating oil delivery. The domain name was not purchased in order to be sold, transferred or rented in any way and has never been offered to Complainant or anyone else for this purpose. The domain name was not registered or used to disrupt the business of any competitor and it was not Respondent”s intent to create confusion or the likelihood of confusion with Complainant”s mark. The terms in Complainant”s purported ORDERMYOIL.COM mark are generic and should not be allowed to be a service mark in an industry that sells oil, as it would prevent legitimate heating oil dealers from competing fairly in an emerging marketplace.

C. Additional Submission

In its Additional Submission, Complainant reiterates the facts and arguments set forth in the Complaint.” Complainant alleges that Complainant has been found to have common law trademark rights in the mark “OrderMyOil.com”, which is not generic.” Complainant also states that the addition in the disputed domain name of the generic and/or descriptive word “heating”, which has on obvious relationship with Complainant”s business, does not sufficiently distinguish the disputed domain name from Complainant”s mark. Lastly, Complainant contends that Respondent is attempting to mislead consumers for commercial gain by creating a likelihood of confusion, as shown by Respondent”s use of Complainant”s “OrderMyOil” mark, combined with use of Complainant”s “Buy Online and Save” slogan, Complainant”s “Order Page”, “and the likeness of Complainant”s truck.

FINDINGS

Complainant is in the business of selling and delivering heating oil in Massachusetts. “”

Respondent is a competitor of Complainant.”

The disputed domain name was registered on September 12, 2017.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Rights or Legitimate Interests

The Panel notes that in the disputed domain name the terms “order”, “my”, “heating” and “oil” plus the gTLD “.com” are strictly descriptive of the action of sending a request for purchasing oil for heating purposes via the Internet.” As such, these terms constitute a phrase that should be open to registration on a “first come, first served” basis.”” Moreover, the phrase “order my oil” in Complainant`s own domain name <ordermyoil.com> is clearly composed of descriptive / generic terms, the last of which ” without any qualifier ” appears to refer to any kind of oil. ”

The Panel also notes that in a recent case involving this very same Complainant and another provider of heating oil in Massachusetts, a three-member Panel unanimously found that the domain name <orderyouroil.com> “uses a combination of words meant to describe the services provided within the resolving website” and considered “that, indeed, the disputed domain name <orderyouroil.com> is integrated by a phrase which describes the services provided by Respondent. “The resolving website of the disputed domain name allows consumers to order oil online.” Moreover, Respondent is acting in good faith, since as part of freedom to compete and entrepreneurial freedom; Respondent has chosen a service and obtained a descriptive domain name to provide it.” Selling oil online and allowing consumers to order their oil, is a commercial service legally allowed and an e-commerce activity, that Respondent is performing in good faith.””” See Wes Madan / United Oil Heat, Inc., d/b/a OrderMyOil.com v. michael Meehan, FA 1715122. (Forum Mar. 9, 2017).”

The Panel believes that this reasoning of the three-member panel also applies the relevant facts in the instant case.” Respondent is also in the business of delivering heating oil and providing related services in Massachusetts, and for this purpose, he operates an active website at the disputed domain name.” The Panel does not believe that the phrase or slogan “buy online and save” – used by both parties- has any originality.” Its use simply underlines an obvious advantage of e-commerce vis-“-vis other channels of trade, from which any e-merchant can benefit, and does not indicate any lack of bona fides on the part of Respondent.

Complainant contends that Respondent copied the disputed domain name from Complainant`s “OrderMyOil.com”, inter alia because in the disputed domain name the terms “order”, “my”, “heating” and “oil” are capitalized in the same way as “OrderMyOil.com” on Complainant”s website. However, the Panel notes that in English titles, the first letter in common nouns, verbs and other terms normally is capitalized, and that on occasion terms in domain names are capitalized just as titles, just as shown with the examples of “CreativeDecksMass.Com”, “LaserCraze.us” and “RidesWithDavid.com” in the ads provided by Respondent as Exhibit A to the Response.” Since this practice is not uncommon – at least in the United States – the Panel does not believe that capitalization of terms in “OrderMyHeatingOil.com” on the website at the disputed domain name or in Respondent`s forms or stationery is any evidence that Respondent is trying to pass itself off as Complainant.” Nor does the Panel believe that the fact that Respondent appears to be using trucks of the same make as Complainant to deliver oil be an attempt at passing off.”

The Panel concludes that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services, pursuant to Policy ” 4(c)(i).”

Since Complainant failed to prove that Respondent lacks any rights or legitimate interests in the disputed domain name according to Policy ” 4(a)(ii), the Panel need not inquire into the remaining elements of the Policy.” See Creative Curb v. Edgetec Int”l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant”s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary; see also I4 Solutions, Inc. v. Miani, FA 1153871 (Forum April 24, 2008) (finding it unnecessary to examine Policy “” 4(a)(i) and (ii), as the complainant must succeed under all three portions in order to grant the requested relief; thus, a denial under Policy ” 4(a)(iii) leads the Panel to decline to analyze the other portions of the Policy.)

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <ordermyheatingoil.com> domain name REMAIN WITH Respondent.

Roberto A. Bianchi, Panelist

Dated: March 19, 2018


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