UDRP result: Transfer domain.
Dot .APP is very popular – among cybersquatters, as well.
The use of generic domains alongside .APP can trigger some inconspicuous trademark violations, but there are more explicit examples of blatant cybersquatting from registrants of famous marks.
In a UDRP case involving the domains americanhomeshield.app, merrymaids.app, servicemaster.app, and terminix.app, the Complainant is a single entity:
“ServiceMaster, American Home Shield, and Terminix are affiliated companies as American Home Shield and Terminix are subsidiaries of ServiceMaster.”
It seems that the Respondent in this UDRP, who did not file a response, went after these famous brands en masse.
Lynda M. Braun, sole panelist at the WIPO, ordered all domains to be transferred to the Complainant. Full details on this decision follow:
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ServiceMaster Brands, L.L.C., American Home Shield Corporation, The Terminix International Company Limited Partnership v. Contact Privacy Inc. Customer 1242671357 / Contact Privacy Inc. Customer 1242671322 / Contact Privacy Inc. Customer 1242671309 / Contact Privacy Inc. Customer 1242671356 / Nate Brown, Luxury & Layla
Case No. D2018-18051. The Parties
The Complainant is ServiceMaster Brands, L.L.C. (“ServiceMaster”) of Burlington, Vermont, United States of America (“United States”), American Home Shield Corporation (“American Home Shield”) of Memphis, Tennessee, United States, and The Terminix International Company Limited Partnership (“Terminix”) of Memphis, Tennessee, United States, represented by Partridge Partners PC, United States (ServiceMaster, American Home Shield, Merry Maids, and Terminix will hereinafter collectively be referred to as the “Complainant”).
The Respondent is Contact Privacy Inc. Customer 1242671357 of Ontario, Canada / Contact Privacy Inc. Customer 1242671322 of Ontario, Canada / Contact Privacy Inc. Customer 1242671309 of Ontario, Canada / Contact Privacy Inc. Customer 1242671356 of Ontario, Canada / Nate Brown, Luxury & Layla of New York, New York, United States.
2. The Domain Names and Registrar
The disputed domain names (the “Disputed Domain Names”) <americanhomeshield.app>, <merrymaids.app>, <servicemaster.app>, and <terminix.app> are registered with Google Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2018. On August 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On August 10 and 13, 2018, the Registrar transmitted by email to the Center its verification responses disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Registrar confirmed that Nate Brown, Luxury & Layla was the registrant of each of the Disputed Domain Names. The Center sent an email communication to the Complainant on August 14, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 14, 2018.
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 the Respondent of the Complaint, and the proceedings commenced on August 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2018.
The Center appointed Lynda M. Braun as the sole panelist in this matter on September 14, 2018. 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
This dispute concerns the Disputed Domain Names <americanhomeshield.app>, <merrymaids.app>, <servicemaster.app>, and <terminix.app>. The Complainants are either owned by affiliated companies or owned by subsidiary companies. Here, ServiceMaster, American Home Shield, and Terminix are affiliated companies as American Home Shield and Terminix are subsidiaries of ServiceMaster.
ServiceMaster is a provider of residential and commercial cleaning and repair services, with thousands of locations around the world. ServiceMaster has used its widely-known SERVICEMASTER trademark (the “SERVICEMASTER Mark”) in connection with cleaning and repair services since as early as 1929, and it remains in use worldwide today. ServiceMaster is the owner of numerous registrations worldwide containing the SERVICEMASTER Mark, including United States Registration Nos. 782,584 (registered December 29, 1964) and 1,220,269 (registered December 14, 1982). In addition to its trademark registrations, the Complainant ServiceMaster has registered domain names containing the SERVICEMASTER Mark, including, inter alia, <servicemaster.com> and <servicemaster.ca>. The earliest of these registered domain names, <servicemaster.com>, was registered on March 25, 1997, before the Respondent’s registration of the Disputed Domain Name <servicemaster.app>.
ServiceMaster has provided residential cleaning services under the MERRY MAIDS trademark (the “MERRY MAIDS Mark”) for almost forty years. ServiceMaster has used its MERRY MAIDS Mark in connection with cleaning services since 1980, and the brand has expanded to provide services throughout the United States, Canada and the European Union. ServiceMaster is also the owner of numerous registrations worldwide containing the MERRY MAIDS Mark, including United States Registration No. 1,343,329 (registered June 18, 1985). In addition to its trademark registrations, ServiceMaster has registered domain names containing the MERRY MAIDS Mark, including, inter alia, <merrymaids.com> and <merrymaids.ca>. The earliest of these registered domain names, <merrymaids.com>, was registered on November 23, 1994, before the Respondent’s registration of the Disputed Domain Name <merrymaids.app>.
Terminix has been a provider of pest control services since 1928, serving millions of customers across twenty-two countries, including in the United States, Canada, and the European Union. The Complainant Terminix is the owner of numerous registrations worldwide containing or comprising TERMINIX including, but not limited to, United States Registration Nos. 635,715 (registered October 9, 1956) and 1,404,366 (registered August 5, 1986), and International Trademark Registration No. 1090778 (registered June 24, 2011) (the “Terminix Mark”). In addition to its trademark registrations, Terminix has registered domain names containing the TERMINIX Mark, including, inter alia, <terminix.com> and <terminix.eu>. The earliest of these registered domain names, <terminix.com>, was registered on November 23, 1994, before the Respondent’s registration of the Disputed Domain Name <terminix.app>.
American Home Shield provides home warranty services under the AMERICAN HOME SHIELD trademark since 1971 (the “AMERICAN HOME SHIELD Mark”). Since its founding in 1971, American Home Shield has expanded to provide services throughout the United States, and in the European Union. It is the owner of numerous registrations worldwide containing the AMERICAN HOME SHIELD Mark, including United States Registration Nos. 1,427,790 (registered February 3, 1987) and 1,956,992 (registered February 20, 1996). In addition to its trademark registrations, ServiceMaster has registered domain names containing the AMERICAN HOME SHIELD Mark, including, inter alia, <americanhomeshield.com>. The <americanhomeshield.com> domain name was registered on September 27, 1998, before the Respondent’s registration of the Disputed Domain Name <americanhomeshield.app>.
The Respondent registered the Disputed Domain Names on May 14, 2018. The Disputed Domain Names resolve to passively held, inactive pages.
5. Parties’ Contentions
A. Complainant
The Complainant contends that:
– The Disputed Domain Names are confusingly similar to the trademarks in which the Complainant has rights;
– The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names;
– The Disputed Domain Names were registered and are being used in bad faith; and
The Complainant seeks the transfer of the Disputed Domain Names from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In its Complaint, the Complainant argues that consolidation is appropriate in this proceeding. In the case of multiple complainants filing against a single respondent, paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether “(i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1. The Panel submits that the criteria set out above are met and thus, accepts consolidation in the present case.
Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:
(i) The Disputed Domain Names are identical or confusingly similar to trademarks or service marks in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) The Disputed Domain Names were registered and are being used in bad faith.
A. Identical or Confusingly SimilarThis element consists of two parts: first, does the Complainant have rights in a relevant trademark or trademarks and, second, are the Disputed Domain Names identical or confusingly similar to those trademarks.
The Panel concludes that the Disputed Domain Names are confusingly similar to the SERVICEMASTER, TERMINIX, MERRY MAIDS, and AMERICAN HOME SHIELD Marks.
It is uncontroverted that the Complainant has established rights in the SERVICEMASTER, TERMINIX, MERRY MAIDS and AMERICAN HOME SHIELD Marks based on longstanding use and ownership of many trademark registrations for those trademarks. The Disputed Domain Names consist of the SERVICEMASTER, TERMINIX, MERRY MAIDS and AMERICAN HOME SHIELD Marks in their entirety, followed by the newly-launched Top-Level Domain (“TLD”) “.app”.1
The Disputed Domain Names incorporate the Complainant’s marks in their entirety. Prior UDRP panels have held that “when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy.” See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
Further, the addition of a TLD such as “.app” in a domain name may be technically required. Thus, it is well established that such element may be 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.
The Panel finds that the Disputed Domain Names are confusingly similar to trademarks in which the Complainant has rights, and thus the Complainant satisfied the first prong of the Policy.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to 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 bears the burden of production to demonstrate 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 3.0, section 2.1.
There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Names. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s trademarks. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Names.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Names and that the Complainant has satisfied the second prong of the Policy.
C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Names.
First, based on the circumstances here, the Panel finds that the Respondent registered and used the Disputed Domain Names in bad faith in an attempt to create a likelihood of confusion with the Complainant’s SERVICEMASTER, TERMINIX, MERRY MAIDS and AMERICAN HOME SHIELD Marks and disrupt the Complainant’s business.
Second, bad faith may be found where the Respondent knew or should have known of the Complainant’s registration and use of the SERVICEMASTER, TERMINIX, MERRY MAIDS and AMERICAN HOME SHIELD Marks prior to registering the Disputed Domain Names. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. The Respondent registered the Disputed Domain Names long after the Complainant obtained its trademark registrations for the SERVICEMASTER, TERMINIX, MERRY MAIDS and AMERICAN HOME SHIELD Marks in the United States and other jurisdictions throughout the world. The fame of the SERVICEMASTER, TERMINIX, MERRY MAIDS and AMERICAN HOME SHIELD Marks makes it disingenuous for the Respondent to claim that he was unaware that the registration of the Disputed Domain Names would violate the Complainant’s rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights in the complainant’s trademarks). Finally, the Panel finds that the Respondent’s registration of the Disputed Domain Names all incorporating identically the trademarks of the related Complainant companies on the same day to be beyond coincidental.
Third, the Respondent’s registration and use of the Disputed Domain Names that are confusingly similar to the Complainant’s well-known trademarks suggests bad faith registration and use. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests bad faith).
Finally, inactive or passive holding of the Disputed Domain Names by the Respondent may amount to bad faith use. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v ChinaVogue.com, WIPO Case No. D2005-0615; Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of domain names that incorporate well-known trademarks without a legitimate Internet purpose may indicate that the Disputed Domain Names are being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, supra; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574. Here the Panel has considered and found bad faith use by the Respondent due to the passive holding of the Disputed Domain Names and thus, the Complainant has satisfied the third prong 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 Names, <americanhomeshield.app>, <merrymaids.app>, <servicemaster.app>, and <terminix.app> be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: September 24, 20181 Google only recently launched its TLD “.app” on March 1, 2018. Beginning on March 8, 2018, the general availability period began, where anyone could register available .app domains.
