Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Rug Doctor L.P. of 4701 Old Shepard Place, Plano, Texas 75093-0965, United States of America.

Represented by Caroline G. Chicoine of the firm of Thompson Coburn LLP, of One Firstar Plaza, St. Louis, MO 63101, United States of America.

The Respondent is Domain Strategy, Inc. of 4 place du commerce, Montreal, Quebec H3E 1J4, Canada.

Respondent is not represented.

The domain name with which this dispute is concerned is: <rugdr.com>.

The Registrar with which the domain name is currently registered is Enom, Inc. of 16771 NE 80^th Street, Ste. 100, Redmond, WA 98052, United States of America.

3.1 The Complaint was filed with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") on April 15, 2002.

3.2 On April 30, 2002, the Registrar verified:

(i) that a copy of the Complaint had been served on it;

(ii) that the domain name is registered with it;

(iii) that the current registrant of the domain name is the Respondent;

(iv) that the Policy applies to the registration of the domain name;

(v) that the domain name is currently in "Lock" status;

(vi) that the language of the registration agreement is English;

(vii) that the registrant of the domain has submitted to the jurisdiction of the courts at the location of the Registrar's principal office;

(viii) Respondent's Administrative Contact, Billing Contact and Technical Contact is Richard Mandanice of 4 place du commerce, Montreal, Quebec H3E 1J4, Canada.

3.3 On May 1, 2002, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding as follows:

(i) by courier, by facsimile and by e-mail to Respondent, the Administrative Contact, Billing Contact and Technical Contact and also to Christian Francoeur, CyberActif Media, Inc, and E-commerce Division.

(ii) by e-mail to the postmaster at the domain name;

3.4 Courier and facsimile deliveries of the Complaint appear to have been effected. The e-mail deliveries appear to have been unsuccessful. The Panel is satisfied the responsibility on the Center imposed by Rule 2 of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") has been met.

3.5 The Administrative Proceeding commenced on May 1, 2002, and the Response was due on May 21, 2002.

3.6 No Response was filed and on May 24, 2002, Notice of Respondent Default was issued.

3.7 Panelist Desmond J. Ryan, having filed the Statement of Acceptance and Declaration of Impartiality and Independence, the Panel was appointed on June 3, 2002.

4.1 The domain name was registered with the registrar in question, on March 9, 2002.

4.2 Complainant is a U.S. Corporation founded in 1972 which manufacturers, sells and services carpet cleaning products and machines. It has over 30 warehouse distribution plants and service centres around the United States, a manufacturing facility in the United Kingdom and warehouse distribution centres in Canada, Puerto Rico, Australia and over twenty other countries.

4.3 Complainant is the registered proprietor of eleven United States trademark registrations of trademarks consisting of, or including the word "Rug Doctor" (Complaint Annexes H, I and J).

4.4 Absent the filing of a Response, no information is available about Respondent save for that set forth in the Complaint and the annexes thereto.

4.5 The domain name was registered by Complainant on January 31, 2000. One of its employees, Kevin Anderson, was nominated as the Billing Contact. The then Registrar for the domain name, Register.com, sent a renewal notice to Mr Anderson in November 2001, but by that time, Mr Anderson had left the employ of Complainant and the renewal notice was not opened. In consequence, Complainant's registration of the domain name lapsed in January 2002. On becoming aware of this at some time prior to March 28, 2002, Complainant contacted Register.com and discovered that the domain name had been registered by Christian Francoeur. Entry of the domain name on March 28, 2002, led to a pornographic web-site at <www.webcamsalon.com>.

4.6 On March 30, 2002, the domain name was transferred from Mr Francoeur to Respondent. Entry of the domain name on April 5, 2002, led to a pornographic web-site at <www.tinawebcam.com> (Complaint Annex S).

4.7 The Whois record for the domain name, <domainstrategy.com> shows the domain name to be registered to CyberActif of Val-Dor, Quebec, Canada, and the Administrative, Technical, and Zone Contact to be Christian Francoeur of the same address (Complaint Annex Q).

4.8 Complainant produces numerous media articles tending to show that Mr Francoeur is in the business of trafficking in domain names and of acquiring domain names which have been allowed to lapse (Complaint Annexes K, L, M, N, O, P, U, V, W). Web-sites alleged to have been acquired by Mr Francoeur and used to point to pornographic web-sites range from domain names originally owned by The Royal New Zealand Yacht Squadron to the name of a search web-site set up to assist in the search for an abducted and murdered eleven year old Texas schoolgirl.

5.1 This dispute is one to which the Policy applies. By registering the domain name, Respondent accepts the dispute resolution policy adopted by the Registrar. The Registrar's current policy set out in its domain name registration agreement is the Policy.

5.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:

(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in the domain name; and

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

6.1 Complainant contends that:-

(i) Respondent, Christian Francoeur and CyberActif are one and the same, or at least very closely related entities.

(ii) The domain name is virtually identical to Complainant's "Rug Doctor" trademarks, the only difference being that the domain name uses the well-known and common abbreviation for the term "Doctor".

(iii) Respondent has no right or legitimate interest in the domain name. It has not been known by the domain name, does not make any legitimate non-commercial or fair use of the domain name, and has not been used for the bona fide offering of goods or services. Respondent makes no use of the term "Rug Dr" and there are no U.S. trademark registrations or pending applications in the name of Respondent, Mr. Francoeur or CyberActif (Complaint Annex X). Its only use has been to misleadingly direct traffic to its pornographic web-sites.

(iv) Respondent has registered, and is using the domain name in bad faith. Respondent contends that it is reasonable to conclude that Respondent's ultimate purpose was to offer to resell the domain name back to Complainant or Complainant's competitors, since traffic generated by the site quickly evaporates, once users realise that they are being misdirected to a pornographic web-site, and at that point the only value in the domain name is its resale value.

(v) Respondent's conduct falls within paragraph 4(b)(ii) of the Policy, in that the domain name has been registered in order to prevent Complainant from using the domain name, and Respondent has been demonstrated to engage in a pattern of such conduct.

(vi) Complainant further contends that Respondent has, by using the domain name intentionally attempted to attract for commercial gain, Internet users to its web-site by creating a likelihood of confusion with Complainant's "Rug Doctor" mark. Respondent has traded on such confusion to direct traffic to its pornographic sites.

6.2 No response having been filed, Complainant's contentions are not rebutted.

7.1 Respondent has clearly demonstrated rights in the trademark "Rug Doctor". The domain name, apart from the addition of the domain designation .com, consists of the word "Rug" with the addition of the letters "Dr" the common and ordinarily used abbreviation of the word "Doctor".

7.2 The Panel therefore finds that the domain name is confusingly similar to the trademark "Rug Doctor" in which Complainant has rights.

7.3 Respondent has no connection with Complainant, and has, through Christian Francoeur, opportunistically picked up the domain name after its inadvertent lapsing and capitalised on its capacity to generate residual traffic and divert such traffic to pornographic sites which Respondent operates or is associated with. Such unauthorised use of the domain name does not constitute use in the bona fide offering of services at the site.

7.4 The Panel therefore finds that Complainant has established that Respondent has no rights or legitimate interests in the domain name.

Bad Faith Use and Registration

7.5 The action of Christian Francoeur in picking up the lapsed web-site and directing it to a pornographic web-site, and the subsequent transfer to Respondent for the same purposes, raises an overwhelming presumption that the purpose of the registration and use is to trade upon the confusion created not only with Complainant's trademark, but with the residual reputation of Complainant's web-site. Complainant's further contention that Respondent's ultimate objective is to attempt to sell the domain name back to Complainant at a future stage is not without credence and has not been rebutted by Respondent.

7.6 The Panel therefore finds that Complainant has established a prima facie showing of registration and use of the domain name in bad faith.

8.1 The Panel decides and orders that:

(i) The domain name is confusingly similar to a trademark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in the domain name;

(iii) The domain name was registered and is being used in bad faith; and

(iv) The domain name shall be transferred to Complainant.