DECISION

Brinks Services Inc. v. S. Holt

Claim Number:  FA0409000324699

PARTIES

Complainant is Brinks Services, Inc. (“Complainant”), 7969 Engineer Road #106, San Diego, CA 92111.  Respondent is S. Holt (“Respondent”), 13300 Los Coches Road, El Cajon, CA 92020.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <brinksplumbing.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically September 7, 2004; the Forum received a hard copy of the Complaint September 10, 2004.

On September 8, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <brinksplumbing.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On September 22, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 12, 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@brinksplumbing.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 21, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name Respondent registered, <brinksplumbing.com>, is identical to Complainant’s BRINKS PLUMBING mark.

2. Respondent has no rights to or legitimate interests in the <brinksplumbing.com> domain name.

3. Respondent registered and used the <brinksplumbing.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owned the domain name registration for <brinksplumbing.com>; however, the domain name registration expired and an alleged competitor, Master Plumbing, acquired it February 22, 2004, identifying the new domain name registration’s administrative and technical contact as Mike Logsdon.  Complainant attempted to contact Mr. Logsdon but such attempts were unsuccessful.

Complainant contacted the Operations Manager, Melissa Ramont, of the Better Business Bureau in San Diego, California, and notified Ms. Ramont of Master Plumbing’s actions with regard to the domain name registration for <brinksplumbing.com>.  After Ms. Ramont contacted Master Plumbing, Complainant was informed that Master Plumbing no longer owned the domain name registration and that Mike Logsdon believed that the registration was now for sale.  However, Complainant performed a WHOIS search of the disputed domain name registration and discovered that the registration had not been transferred, but that it had been converted into a private registration with Domains by Proxy, which conceals the identity of the registrant for a fee. 

Complainant’s representative sent a letter to Domains by Proxy explaining the prior events.  Domains by Proxy then revealed the true registrant on the WHOIS information as being Master Plumbing.  Days later, the domain name registration again changed to a new registrant, “FJJ,” and the administrative contact was identified as “Jet Jackson,” the e-mail address was listed as famousjetjackson@hotmail.com, and the telephone number changed to 800-555-1212, which is the national toll-free directory assistance line.

Ms. Ramont contacted Mr. Logsdon on behalf of Complainant and was informed that Mr. Logsdon may be willing to sell the domain name registration to Complainant.  On August 26, 2004, a representative of Complainant received an email from “FJJ” offering to sell the domain name registration.  On August 30, 2004, Complainant’s representative made an offer of $100. for the domain name registration.  On September 2, 2004, “FJJ” responded by stating that it had already transferred the rights to the domain name registration to another entity.  On September 4, 2004, the WHOIS registration information identified the registrant of the domain name <brinksplumbing.com> as being “S. Holt,” the Respondent in the instant proceeding.

Complainant states that it is primarily a plumbing company, although Complainant also states that it offers other services such as leak detection, flood work, mold remediation, and water damage restoration services.  Complainant has also stated that it “uses the term ‘Brinks Plumbing’ in its advertising and marketing.”

Respondent registered the domain name <brinksplumbing.com> February 22, 2004.  The record fails to indicate how the domain name is being used.

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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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.

Identical to and/or Confusingly Similar

As stated above, Policy ¶ 4(a)(i) requires Complainant to prove that the domain name <brinksplumbing.com> registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights. 

To establish standing under the Policy, a complainant must prove its acquisition of valid rights in a trademark or service mark.  In the instant case, Complainant has not directly asserted rights in the BRINKS PLUMBING mark.  However, Complainant alluded to the fact that the BRINKS PLUMBING mark is, in fact, a service mark when it stated, “[Master Plumbing] registered the domain name in an attempt to prevent Brinks Services from using their service mark.” Also, Complainant has stated that it “uses the term ‘Brinks Plumbing’ in its advertising and marketing.”  The previous statements are the only references in the Complaint to the term “Brinks Plumbing” being used as a service mark.  A service mark is any word, name, symbol, device, or any combination used or intended to be used in commerce to identify and distinguish the services of one provider from services provided by others and to indicate the source of the services.  However, simply using a service mark does not confer rights to the user under the Policy.  If such a peculiar idea became the rule, one would be able to adopt the service mark of any third party, even if such use would infringe upon the third party’s mark.  Therefore, it is apparent that there is a difference between using a service mark and acquiring rights to such a mark. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (finding that in order to bring a claim under the Policy, Complainant must first establish a prima facie case.).

Under the Policy, a complainant may establish rights in a service mark in one of two ways.  The user may register the mark with an appropriate governmental authority or the user may assert and prove common law rights to the mark.  In the instant case, no direct assertion bears on either option.  Complainant has stated that the term “Brinks Plumbing” has been used in its advertising and marketing, but Complainant has not provided any extrinsic evidence to support this contention.  More importantly, Complainant has not linked the term “Brinks Plumbing” with any specific services that it is used to identify.  See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names”).

Complainant did not state that it owns any type of registration for the BRINKS PLUMBING mark and Complainant did not provide evidence to suggest that it owns any such registration.  Moreover, Complainant did not assert common law rights in the BRINKS PLUMBING mark and Complainant did not provide evidence that suggests how long Complainant has made any such use of the mark.  Most notably, Complainant has not stated any precise services connected with the mark’s use. 

Complainant also failed to assert or provide any evidence that the public has come to identify the BRINKS PLUMBING mark with the unidentified services offered by Complainant.  See Restatement (Third) of Unfair Competition § 13, pp. 37-38, and Comment a (Tent. Draft No. 2, Mar. 23, 1990) (An identifying mark is distinctive and capable of being protected if it either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning.); see also Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that simply operating under a business name does not, per se, constitute secondary source identification sufficient to warrant a finding of common law rights in a mark); see also Empire Home Servs., LLC v. Bryan, FA 117871 (Nat. Arb. Forum Oct. 22, 2002) (finding that Complainant failed to demonstrate rights in a mark where it merely alleged common law rights but failed to provide any evidence such as “date of first use, or any evidence demonstrating the use of the mark in commerce”). 

In Powrachute Inc. v. Buckeye Indus., the complainant began manufacturing powered parachutes in December of 1998 under the name “Powrachute Incorporated.”  AF-0076 (e-Resolution, May 30, 2000).  The respondent, who was also in the parachute business, registered the domain names <powrachute.com>, <powrachutes.com>, and <powrachute.net> in December of 1999.  Id.  The complainant contended that the respondent registered domain names that were identical to its corporate name.  Id.  The Panel denied the complaint on the grounds that the complainant never asserted that it had ever registered a trademark or service mark for POWRACHUTE, nor had complainant “contended, provided evidence, or given arguments to the effect that it [had] a common law trademark for the name POWRACHUTE.”  Id.

Despite the above history that suggests devious conduct by the Respondent and despite the lack of a response in this case, Complainant is required to meet the burden before it may prevail in the case.   The Panel may not ignore Policy standards that govern outcomes in this proceeding, even where the Panel believes that with adequate proof the Complainant might prevail.  The Panel lacks the authority to replace the standards implemented by ICANN, as expressed in the Policy paragraphs.  A fundamental goal for this Panel is to maintain the integrity of the Policy that each element be proven. Complainant failed to assert or provide evidence that Complainant has a valid service mark under paragraph 4(a)(i) of the Policy and therefore, Complainant has failed to meet its burden of proof to establish standing. 

Due to Complainant’s failure to establish standing under the Policy, it is unnecessary for the Panel to analyze paragraphs 4(a)(i) and (iii) of the Policy.  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).

DECISION

Since Complainant failed to establish standing under ICANN Policy, the Panel DISMISSES the Complaint without prejudice to refiling.

Hon. Carolyn Marks Johnson, Panelist

Dated: November 4, 2004

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