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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
The Terminix International Company L.P.
v.
Daniel DHondt d/b/a The REAL Bug Busters, Inc.
Complainant is The Terminix International
Company L.P. (“Complainant”), represented by P. Jay Hines, of Oblon,
Spivak, McClelland, Maier & Neustadt, P.C., 1940 Duke Street,
Alexandria, VA 22314-3454. Respondent
is Daniel DHondt d/b/a The REAL Bug Busters, Inc. (“Respondent”),
2533 N. Carson St. Box R-233, Carson City, NV 89706.
The domain name at issue is <terminix.org>,
registered with Intercosmos Media Group, Inc.
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.
R. Glen Ayers served as Panelist.
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on May 20, 2004; the
Forum received
a hard copy of the Complaint on May 21, 2004.
On May 20, 2004, Intercosmos Media Group, Inc.
confirmed by e-mail to the Forum that the domain name <terminix.org>
is registered with Intercosmos Media Group, Inc. and that the Respondent is the
current registrant of the name.
Intercosmos Media Group, Inc. has verified that Respondent is bound by
the Intercosmos Media Group, Inc. registration agreement and
has thereby agreed
to resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On May
26, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 15,
2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail,
post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts,
and to postmaster@terminix.org by e-mail.
Although Respondent failed to submit its
Response by the deadline set forth in accordance with ICANN’s Rule 5(a), the
Panel may choose
to accept or decline to accept the late Response. As stated in Strum v. Nordic Net Exch. AB,
FA 102843 (Nat. Arb. Forum Feb. 21, 2002); “[r]uling a Response inadmissible
because of formal deficiencies would be an extreme
remedy not consistent with
the basic principles of due process.”
On June 20, 2004, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed R. Glen
Ayers as Panelist.
Complainant requests that the domain name be
transferred from Respondent to Complainant.
A. Complainant
Complainant contends that Terminix International
Company, LP, holds a number of registered marks including Terminix. Terminix has used the mark since at least November of 1928. Complainant also asserts that this is a
famous mark.
Complainant asserts that Respondent registered <terminix.org>
on January 2, 2002. Respondent is not
licensed nor is he authorized to use any Terminix mark. Complainant asserts that the website
advertised the “parent company,” www.BugBusters.com. Complainant asserts that it notified Respondent, by certified mail,
of its concerns about the domain name, and requested that the
domain name be
transferred. In response, Respondent
“threatened” to donate or sell the domain name to a “dissatisfied past customer
of Complainant.” Evidence of this
correspondence has been provided.
Respondent then offered to sell the domain. In the meantime, Respondent made various
threats about adverse publicity.
Complainant declined to purchase the domain
name.
Thereafter, Respondent changed the domain to
which the URL resolved, now, suddenly, it contained
a disclaimer.
Complainant asserts that the <terminix.org>
domain name is identical to or confusingly similar to its marks.
Complainant also asserts that there are not
rights or legitimate interests held by Respondent. Further, Respondent sought to sell the domain name. Complainant asserts that the current
non-commercial use of the domain name is but a “thinly veiled attempt to paint
over... past activities.”
Further, the current status does not avoid the
possibility of confusion. Finally, as
Complainant points out, Respondent is not commonly known by the domain name.
As to bad faith, Complainant’s contention is
straightforward. It asserts that,
obviously, Respondent registered the name, which is confusingly similar or
identical to a famous mark. Then,
Respondent attempted to sell the domain name, made attempts to blackmail
concerning adverse publicity, and Respondent certainly
knew of the Terminix name and mark, since
Respondent had once worked for Terminix.
B. Respondent
Although Respondent’s Response was received
late, the Panel is determined to consider it. The Response consists of a rather
simple
general denial and a statement that he had registered the domain
name. As Respondent states, he has
“owned, sold or controlled” over 200 domain names.
The facts in this case are very simple and
straightforward. Complainant has
clearly shown that it owns a mark, which is identical or surprisingly similar
to the domain name registered by Respondent.
Complainant has clearly shown that Respondent
has no rights in the name.
Complainant
has clearly shown that Respondent registered the domain name in bad faith. Complainant has shown that Respondent knew
of the existence of the famous name, registered the famous name notwithstanding
the existence
of the marks held by Terminix, and then attempted to sell the
domain name to Terminix by use of, among other things, unsavory threats
of
blackmail.
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the
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 the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant
has rights; and
(2)
the
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.
Complainant, as the holder of registered Terminix marks is entitled to assert
that <terminix.org> is identical to confusingly similar to its
registered mark. The domain fully
incorporates the mark and merely adds a generic top-level domain, “.org.” Such an addition is irrelevant to
determining whether the domain name is identical to the mark. See Microsoft Corp. v. Mehrotra,
D2000-0053 (WIPO Apr. 10, 2000).
Further, the added disclaimer does not affect
this finding. See AltaVista
Co. v. Alta Vista, FA 95480 (Nat. Arb. Forum Oct. 31, 2000).
Complainant has certainly demonstrated that
there are no rights or legitimate interests.
Although Respondent’s Response asserts that he will not use the name
except for some fair use for a non-commercial purpose, such a
contention is
irrelevant. See generally Lockheed Martin
Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000). Otherwise, the lack of any legitimate
authorized or other use means that Respondent has no rights or legitimate
interests in the domain
name. See
Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003).
Clearly this Respondent has attempted to use an
identical domain name for commercial gain.
This is evidence of bad faith. See
H-D Michigan Inc. v. Petersons Auto., FA 135608 (Nat Arb. Forum Jan. 8,
2003).
Registration for purpose of re-sale is also
evidence of bad faith. See AM.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb.
Forum Nov. 6, 2000).
Having established all three elements required
under the ICANN Policy, the Panelist concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <terminix.org>
domain name be TRANSFERRED from Respondent to Complainant.
R.G. Ayers, Panelist
Dated: July 12, 2004
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