|Kläger||BASEMENT TECHNOLOGIES, INC.|
|Beklagter||Rogers Pest Control, Kenneth Rogers|
|Entscheider||Badgley, Robert A.|
Complainant is Basement Technologies, Inc. of Brockton, Massachusetts, United States of America, represented by Yurko, Salvesen & Remz, PC, United States of America.
Respondent is Rogers Pest Control, Kenneth Rogers of Dorchester, Massachusetts, United States of America.
The disputed domain name <1basementtechnologies.com> (the “Domain Name”) is registered with Register.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2009. That day, the Center transmitted by e-mail to Register.com, Inc. a request for registrar verification in connection with the Domain Name. On the same day, Register.com, Inc. transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant.
Complainant filed an amendment to the Complaint on June 8, 2009. The Center verified that the Complaint, together with the amendment to 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on July 1, 2009.
The Center appointed Robert A. Badgley as the sole panelist in this matter on July 7, 2009. 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.
Complainant alleges that it is the largest basement waterproofing company in the Commonwealth of Massachusetts, and has been doing business under the name Basement Technologies for more than ten years. Complainant designs and installs basement waterproofing systems and also manufactures and sells waterproofing products and materials. Complainant has licensed dealers across the United States and in Canada.
In 2002, Complainant obtained a registration with the United States Patent and Trademark Office for the mark BASEMENT TECHNOLOGIES. In addition, Complainant registered the domain name <basementtechnologies.com> in November 2001. According to Complainant, this domain name resolves to a website critical to Complainant's business.
Respondent, also a resident of Massachusetts registered the Domain Name <1basementtechnologies.com> on August 3, 2006. The website to which the Domain Name resolves advertises various services, including “waterproofing basements” and “foundation rebuilding.”
Complainant's factual contentions are set forth in the “Factual Background” section above. These contentions are supported with documentary evidence annexed to the Complaint, and undisputed by Respondent. Complainant's arguments will be discussed in the “Discussion and Findings” section below.
Respondent did not reply to Complainant's contentions.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Complainant clearly has rights in the mark BASEMENT TECHNOLOGIES through registration and use. The record amply supports this conclusion, and Respondent has not disputed it.
The Domain Name incorporates Complainant's mark in its entirety, and then adds the numeral “1” at the beginning. In the Panel's view, the additional numeral does not negate the confusing similarity between the BASEMENT TECHNOLOGIES mark and the Domain Name. See Verio Inc. v. Sunshinehh, WIPO Case No. D2003-0255 (June 24, 2003) (<1verio.com> held confusingly similar to VERIO mark).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
Pursuant to paragraph 4(c) of the Policy, Respondent may establish his rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122 (March 26, 2001). Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174 (April 22, 2003), rightly observed as follows: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a Response and hence did not attempt to rebut any of Complainant's assertions.
There is no evidence that Respondent has ever been authorized to use Complainant's mark in a domain name or otherwise.
Likewise, there is no evidence that Respondent is commonly known by the Domain Name, or that he has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services. See, e.g. America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (December 11, 2000) (“it would be unconscionable to find that a bona fide offering of services in a respondent's operation of web-site using a domain name which is confusingly similar to the complainant's mark and for the same business”).
Respondent has not claimed any noncommercial or fair use of the BASEMENT TECHNOLOGIES mark in his Domain Name, and the Panel finds no basis for recognizing any such use.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use OF the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
Complainant relies chiefly on paragraphs 4(b)(iii) and 4(b)(iv) of the Policy, quoted immediately above, to support its bad faith argument. Both arguments are meritorious.
The Panel finds on this record that Respondent is a competitor of Complainant. First, Respondent does not deny this allegation. Second, Respondent's website indicates that Respondent provides basement waterproofing services. Respondent's website under the Domain Name appears designed to disrupt Complainant's business. This is bad faith under paragraph 4(b)(iii).
With respect to paragraph 4(b)(iv), Complainant alleges, and Respondent has not denied, that Respondent derives financial benefits from the hyperlinks maintained at the website. This is clearly in violation of the Policy, as it constitutes an intentional attempt to attract, for commercial gain, Internet users to Respondent's site by creating a likelihood of confusion between the BASEMENT TECHNOLOGIES mark and the Domain Name.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <1basementtechnologies.com> be transferred to Complainant.
Robert A. Badgley
Dated: July 13, 2009