WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Viking Termite & Pest Control, Inc. v. ReachLocal Hostmaster

Case No. D2020-2858

1. The Parties

The Complainant is Viking Termite & Pest Control, Inc., United States of America (“United States”), represented by Zacco Sweden AB, Sweden.

The Respondent is ReachLocal Hostmaster, United States.

2. The Domain Name and Registrar

The disputed domain name <vikingpest.net> is registered with Name.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2020. On October 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2020, 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 October 30, 2020, 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 November 3, 2020.

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 November 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2020.

The Center appointed William R. Towns as the sole panelist in this matter on December 2, 2020. 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 is a pest control company serving residents and business owners in New Jersey, Delaware, Pennsylvania, and Maryland for over 40 years. The Complainant is the owner a United States trademark registration for VIKING PEST CONTROL, United States Reg. No. 4342299, applied for October 2, 2012, registered May 28, 2013. The Complainant also is the holder of a number of domain names reflecting the Complainant’s VIKING PEST CONTROL mark, including <vikingpest.com> and <vikingpestcontrol.com>. The Complainant maintains a website at “www.vikingpest.com”.

The Respondent registered the disputed domain name <vikingpest.net> on August 5, 2020, according to the Registrar’s WhoIs records. The disputed domain name has been redirected by the Respondent to what appears to be a “clone site” displaying the Complainant’s VIKING PEST CONTROL mark and logo, with the disputed domain name <vikingpest.net> appearing in the browser address bar. The Respondent has used the disputed domain name to create false contact information on the website. The website includes a section “customer login”.

On October 6, 2020, the Complainant contacted the hosting provider Rackspace US, Inc., requesting a suspension of the website associated with the disputed domain name, which appeared to be operated by a third party, possibly with fraudulent intent. The hosting provider suspended the website. The Complainant thereafter issued a cease and desist letter that was forwarded by the hosting provider to the Respondent, to which the Complainant received no reply.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name <vikingpest.net> is identical or confusingly similar to the Complainant’s well-known VIKING PEST CONTROL mark. The Complainant observes that the two initial words in the Complainant’s mark, VIKING PEST, are included in the disputed domain name and are clearly recognizable. According to the Complainant, the addition of the generic Top-Level Domain (“gTLD”) “.net” does not have an impact on the overall impression of the disputed domain name and therefore is not relevant to the confusing similarity of the Complainant’s mark to the disputed domain name.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been licensed or otherwise authorized to use the Complainant’s VIKING PEST CONTROL mark, is not an authorized dealer of the Complainant’s products or services, and is not in a business relationship with the Complainant.

The Complainant further maintains that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but instead deliberately registered the disputed domain name, which appropriates the Complainant’s mark, in order to profit from the disputed domain name. According to the Complainant, Internet visitors redirected by the Respondent using the disputed domain name are likely to conclude they have arrived at a website owned and operated by the Complainant. The Complainant adds that the site does not accurately and prominently disclose the Respondent’s relationship, if any, to the trademark owner.

The Complainant maintains that the disputed domain name was registered and is being used in bad faith by the Respondent. The Complainant observes that the Respondent registered the disputed domain name long after the Complainant had acquired registered rights in its VIKING PEST CONTROL trademark. According to the Complainant, the Respondent was motivated to register the disputed domain name based on the fame, originality, and value of the Complainant’s VIKING PEST CONTROL brand in the pest control industry.

The Complainant considers it highly likely that the disputed domain name has been operated by the Respondent with fraudulent intent. The Complainant reiterates that the Respondent has not replied to the Complainant’s cease and desist letter, which according to the Complainant UDRP panels have considered relevant to a finding of bad faith. The Complaint concludes that the Respondent by using the disputed domain name has intentionally attempted to attract, for commercial gain, Internet users to its own website, creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

B. Respondent

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

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain name”, also known as “cybersquatting”. Weber‑Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

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

(ii) the respondent has no rights or legitimate interests with respect to the domain name; and

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

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <vikingpest.net> is confusingly similar to the Complainant’s VIKING PEST CONTROL mark, in which the Complainant has established rights through registration and extensive and conspicuous use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.¹ The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.

The Complainant’s VIKING PEST CONTROL mark is clearly recognizable in the disputed domain name.² When the relevant trademark is recognizable in the disputed domain name the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise), does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.³ Generic Top-Level Domains (“gTLDs”) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.⁴

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with relevant evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been licensed or otherwise authorized to use the Complainant’s VIKING PEST CONTROL mark. The Respondent notwithstanding registered the disputed domain name, misappropriating the Complainant’s VIKING PEST CONTROL mark, impersonating the Complainant and likely intending to use the disputed domain name for fraudulent purposes such as phishing.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.

The Panel concludes from the record in this case that the Respondent was aware of the Complainant and had the Complainant’s VIKING PEST CONTROL mark in mind when registering the disputed domain name. As noted earlier, the disputed domain name is confusingly similar to the Complainant’s mark, and the record is convincing that the Respondent likely registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s mark through impersonation of the Complainant.

Having regard to the relevant circumstances in this case, and absent any explanation by the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. There is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy, and nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain name in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004‑0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. Given that the disputed domain name comprises the Complainant’s VIKING PEST CONTROL mark almost in its entirety (except for the term “control”), the Panel considers that the Respondent’s registration (of the disputed domain name with such composition) and use of the disputed domain name to impersonate the Complainant reflects targeting of the Complainant and affirms the bad faith.The Respondent clearly was aware of the Complainant and targeted the Complainant’s VIKING PEST CONTROL mark when registering the disputed domain name. The record is convincing that the Respondent registered and has used the disputed domain name to create a likelihood of confusion with the Complainant’s mark, in all probability seeking to profit illicitly therefrom.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of 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 <vikingpest.net> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: December 15, 2020

¹ See WIPO Overview 3.0, section 1.7.

² See WIPO Overview 3.0, section 1.8 and cases cited therein.

³Id.

⁴ See WIPO Overview 3.0, section 1.11.