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United Air Specialists, Inc. v. Patricia Pleshe [2005] GENDND 1632 (12 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

United Air Specialists, Inc. v. Patricia Pleshe

Case No. D2005-0640

1. The Parties

The Complainant is United Air Specialists, Inc., Cincinnati, Ohio United States of America, represented by Greenebaum Doll & Mcdonald PLLC United States of America.

The Respondent is Patricia Pleshe, Tampa, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <unitedairspecialists.net> (the “Domain Name”), is registered with SRSplus.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2005. On June 20, 2005, the Center transmitted by email to SRSplus a request for registrar verification in connection with the domain name at issue. On June 22, 2005, SRSplus transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceedings commenced on June 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2005.

The Center appointed Thomas D. Halket, Hugues G. Richard and Robert A. Badgley as panelists in this matter on August 29, 2005. The Panel finds that it was properly constituted. Each member of 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

The following facts have been alleged by Complainant and not disputed by Respondent.

Complainant was founded as UNITED AIR SPECIALISTS in 1966; its business is air cleaning and pollution control. Complainant alleges that it has used UNITED AIR SPECIALISTS as a mark since that date. Complainant’s websites are located at “www.uasinc.com”, “www.unitedairspecialists.com”, and “www.unitedairspecialist.com” and logged the following traffic in 2004: 135,360, of which at least 5,748 were new or “unique” visitors.

Respondent appears never to have used UNITED AIR SPECIALISTS in connection with any offering of goods or services under that name. Rather, Respondent is using the Domain Name in connection with a site that automatically redirects its visitors to “www.uniwashinc.com”, the site of one of Complainant’s competitors.

Complainant apparently contacted Respondent by certified U.S. mail and by e-mail in an attempt to resolve the matter. Respondent failed to answer the letter, but Complainant did receive a telephone voicemail message from a company called First Place informing Complainant that it had already created a website with the United Air Specialists name as well as Complainant’s competitors’ names. First Place claimed that its purpose was to build traffic to Complainant’s site. First Place further indicated that it had been sending the traffic to another company, presumably Uni-Wash, Inc., one of Complainant’s competitors. However, First Place said that the company no longer wished to pay for this service. First Place offered the pre-made site to Complainant, saying it would drive traffic to the site in exchange for a fee. Complainant declined to enter into any arrangement with First Place. Some time later, Complainant noticed that the site in question had become accessible at “www.unitedairspecialists.net”. When a visitor to the site clicked “Click to Enter”, the site redirects the visitor to “www.uniwashinc.com”, the site of Uni-Wash, Inc., Complainant’s competitor.

5. Parties’ Contentions

A. Complainant

Complainant alleges:

(a) The Domain Name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights;

(b) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(c) The Domain Name was registered and is being used by Respondent in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: “(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith.”

Paragraph 4(b) provides that for the purposes of Paragraph 4(a)(iii) the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

A. Identical or Confusingly Similar

There is no question that the Domain Name is identical to UNITED AIR SPECIALISTS, the phrase Complainant alleges it has been using as an unregistered trademark since 1966. Whether Complainant has registered the phrase as a trademark is not material to our determination, whether it is used as a trade or service mark, rather than a trade name, may be.

The Panel notes that the Policy seems to require that the Complainant use the Domain Name as a trade or service mark not as a trade name. Paragraph 4(a) provides in pertinent part that “… the domain name [must be] identical or confusingly similar to a trademark or service mark in which the complainant has rights…(emphasis added)”. It is true that Paragraph 4(c) of the Policy allows the Respondent to cite Respondent’s use of the phrase as a defense if respondent was commonly known by the domain name, even if it acquired no trademark or service mark rights; but no such use is given as a basis for Complainant’s case.

Nevertheless, while there is some question as to whether Complainant’s use of the phrase was as a trade name rather than a trademark, the Panel is persuaded that, in the absence of any contrary allegations or evidence, Complainant has met its burden to establish this element of the claim.

B. Rights or Legitimate Interests

The record does not disclose that the Respondent had any rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy. Indeed, what use the Respondent seems to have made of the Domain Name is use that is evidence of bad faith use.

The Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the Domain Name. In the absence of a Response and rebuttal from the Respondent, the Panel finds that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Whether or not Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant or to a competitor of Complainant, and there is at least some evidence that it did, the Panel is convinced that the evidence does establish that Respondent did attempt to attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with the Complainant’s mark. The Domain Name currently is for a site whose only purpose seems to be to redirect traffic to the site of one of Complainant’s competitors. The record thus establishes that Respondent registered and is using the Domain Name in bad faith.

7. Decision

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, <unitedairspecialists.net>, be transferred to the Complainant.

Dated: September 12, 2005