WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Terminix International Company Limited Partnership v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2018-2112

1. The Parties

The Complainant is The Terminix International Company Limited Partnership of Memphis, Tennessee, United States of America (“United States”), represented by Partridge Partners PC, United States.

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Carolina Rodrigues, Fundacion Comercio Electronico of Panama City, Panama.

2. The Domain Name and Registrar

The disputed domain name <temrinix.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2018. On September 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 19, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 21, 2018.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2018.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on October 23, 2018. 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.

4. Factual Background

The Complainant, Terminix has been a provider of pest control services since 1928, serving millions of customers across twenty-two countries.

The Complainant is the owner of the trademark containing or comprising TERMINIX across many countries and, possesses a numerous trademark registrations, some of dating back to 1956. These registrations include:

- United States trademark with registration No. 1404366 registered on August 5, 1986 in International Class 37;

- United States trademark with registration No. 635715 registered on October 9, 1956 in International Class 37;

- United States trademark with registration No. 3586266 registered on March 10, 2009 in International Class 5;

- Panamanian trademark with registration No. 172447 registered on July 3, 2008 in International Class 37;

- Panamanian trademark with registration No. 120986 registered on May 16, 2002 in International Class 37;

The Complainant asserts that as a result of care and skill exercised in the sale and promotion of its Terminix services and products, the trademark TERMINIX has become famous.

Additionally, the Complainant is also the registrant of a domain name including TERMINIX trademark, <terminix.com>.

The disputed domain name <temrinix.com> was registered on September 6, 2018, well after the Complainant secured rights to the trademarks. The disputed domain name initially resolved to a parked website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that the disputed domain name is confusingly similar to the registered trademarks in which the Complainant has rights. It represents that the disputed domain name reproduces the term TERMINIX in its entirety except in respect of the reversal of the third and fourth letters, to become <temrinix.com>. According to the Complainant this simple inversing of the “r” and the “m” does not significantly affect the appearance of the disputed domain name which is confusingly similar to the Complainant’s trademark. Relying on MasterCard International Incorporated v. Acme Mail, WIPO Case No. D2008-0701, the Complainant argues that this kind of reversing two letters in the Complainant’s trademark has been considered before.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that it has rights in TERMINIX and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Respondent is and was not commonly known by the disputed domain name. There is further no indication of any registration of the “temrinix” trademark. Additionally, the Complainant has never authorized, licensed or any way permitted the Respondent to register and use the disputed domain name. Nor does the Respondent have an affiliation or connection with the Complainant.

Furthermore, the Respondent acted with opportunistic bad faith in having registered the disputed domain name in order to make an illegitimate use of it. The Respondent does not appear to have used the disputed domain name for any legitimate noncommercial purpose; the disputed domain name was registered for the purpose of diverting and siphoning Internet users to the Respondent’s website.

(c) The disputed domain name was registered and is being used in bad faith.

The Complainant argues that the registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that trademark is itself evidence of bad faith registration (see Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).

The Complainant further asserts that, at the time of registration of the disputed domain name, given the well-known character and the reputation of the TERMINIX trademark, the Respondent knew the existence of the Complainant’s trademark and was therefore in bad faith when registering the disputed domain name (see MasterCard Int’l Inc. v. North Tustin Dental Assocs, WIPO Case No. D2007-1412 and MasterCard Int’l Inc. v.Totl Card Inc., WIPO Case No. D2007-1411).

Therefore, the Complainant is convinced that the Respondent has registered the disputed domain name seeking to deliberately profit from the confusion of Internet users with TERMINIX trademark.

Additionally, the Complainant contends that bad faith can also be deducted from the Respondent’s history of abusive domain name registrations.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to TERMINIX.

Secondly, the disputed domain name differs from the Complainant’s trademark TERMINIX merely by the reversal of the letter “r” and the letter “m”. In the view of the Panel, the reversal of two simple letters does not influence the similar overall impression of the disputed domain name and the trademark as there are only minor differences in the appearance and pronunciation. This conduct is commonly referred to as “typosquatting” and creates virtually identical and/or confusingly similar domain names to the trademarks of complainants.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s TERMINIX trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you 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 (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 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.”

This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.

It is a well-established view of the UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain, WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson, WIPO Case No. D2016‑1338).

In the present case, taking into consideration the default of the Respondent, this Panel finds that the Complainant has submitted a sufficient prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors:

- there is no evidence that legitimate noncommercial or faire use of the disputed domain name has taken place;

- there is no evidence that the Respondent has been authorized or licensed to use the disputed domain name by the Complainant;

- there is no evidence that the Respondent has commonly been known by the disputed domain name.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“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 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.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”.

The Complainant submits that it is well-settled that bad faith can be found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. The Panel endorses that view. Given the reputation of the TERMINIX trademark, registration in bad faith can be inferred. In the absence of contrary evidence, the Panel finds that the Respondent knew of or should have known of the Complainant’s trademark and services at the time the Respondent registered the disputed domain name given the fame of the Complainant.

According to the Complainant, the Respondent is using the disputed domain name to direct consumers to a parked website. Since then, the Panel finds that the disputed domain name has been altered and Internet users are currently automatically redirected to a variety of websites with diverse content. In the absence of evidence from the Respondent to the contrary, it is likely that the Respondent receives compensation from these various website owners when the Respondent’s visitors are redirected to their websites. Therefore, the Panel is of the opinion that the Respondent is taking undue advantage of the Complainant’s trademark to generate profits and that the use to which the disputed domain name has been put constitutes bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy.

Moreover, the Respondent’s alteration of the content of the disputed domain name is in itself also indicative of bad faith and gives right to a reasonable suspicion that the Respondent is attempting to “cover its tracks”.

Finally, the Respondent’s history of bad faith registration and use of domain names indicates also for the Panel that the disputed domain name has been registered in bad faith (see The British United Provident Association Limited (“Bupa”) v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-1117; SAP SE v. Domains by Proxy LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2018-1090; and Doserno Trading Limited and Red Diamond Holdings Sàrl v. Carolina Rodrigues, FCS Holdings Corp, WIPO Case No. D2012-0506).

In light of the above, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <temrinix.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: November 6, 2018