WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The ServiceMaster Company v. ServiceMaster Workplace Solutions Pvt. Ltd.
Case No. D2008-0878
1. The Parties
The Complainant is The ServiceMaster Company of United States of America, represented by Welsh & Katz, Ltd of United States of America.
The Respondent is ServiceMaster Workplace Solutions Pvt. Ltd., of Karnataka, India.
2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Key-Systems GmbH dba (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2008. On June 9, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 13, 2008, the Registrar transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the Domain Name which differed from that given in the Complaint.
The Center sent an email communication to the Complainant on June 17, 2008 providing the underlying registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 18, 2008.
The Center verified that the Complaint together with the amendment to 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 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2008. The Response was filed with the Center on July 10, 2008.
The Center appointed Tony Willoughby as the sole panelist in this matter on July 21, 2008. 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 company incorporated in the United States of America, which is engaged in the provision of commercial and residential property maintenance services, services which include pest control services, landscaping services, emergency services and cleaning services.
The Complainant has traded under and by reference to the ServiceMaster name for over 50 years. It is the proprietor of a large number of trade mark and service mark registrations of or including the ServiceMaster name including US registration number 782584 dated December 29, 1962 SERVICEMASTER (word) in class 37 for “maintenance services for cleaning interiors of commercial buildings and private homes and furnishings thereof”; and Indian registration number 594227 SERVICEMASTER (word) dated April 8, 1993 in class 3 for “cleaning, polishing, scouring and abrasive preparations including carpet and floor cleaning compounds and waxes”.
The Complainant conducts its online business through its website connected to the domain name, , which it registered on March 25, 1997.
The Respondent is a company incorporated in India. It is engaged in the provision of a range of services to businesses including services concerning, facilities maintenance, administration and human resources. The facilities maintenance services include housekeeping, pest control and landscape maintenance.
On September 28, 2004, the Respondent registered the Domain Name.
On August 26, 2005, the Respondent applied for registration in India of its ServiceMaster logo featuring the name Servicemaster in a stylized form alongside the figure of a juggler in class 35. Use is claimed December 24, 2004. The exhibit of the Complainant providing the details of this application does not expressly identify the services covered by the registration. The words “Office functions” appear on the document and it may be that this is the specification.
The Complainant has lodged an opposition to the Respondent’s service mark application and there are other proceedings afoot before the City Civil Court in Bangalore relating to the use of and rights to the ServiceMaster mark in which each party is seeking injunctive relief against the other.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that it is internationally well-known with a workforce of 32,000 people and an operating revenue of approximately 3.3 billion US dollars. It claims to have “more than 5,500 company-owned and franchised locations worldwide”.
The Complainant contends that the Domain Name is confusingly similar to its registered trade mark, SERVICEMASTER.
It further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It contends that when the Respondent registered the Domain Name the Respondent was aware of the Complainant and its domain name. It contends that the Respondent is a competitor of the Complainant offering similar services to consumers and registered the Domain Name aware that it would be benefiting from the international reputation and goodwill of the Complainant.
Finally it contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
B. Respondent
The Respondent opens by drawing attention to the existence of the trade mark registry and court proceedings currently pending in India. It contends that those proceedings cover the ownership and use of the ServiceMaster name (including the Domain Name) and that this administrative proceeding is unnecessary. It also contends that the Panel is not competent to decide this case under the Policy in light of the existence of the Indian proceedings.
The Respondent seeks suspension of this administrative proceeding pending resolution of the Indian proceedings.
As to the substance of the Complaint, the Respondent states that the information supplied by the Complainant as to the history and extent of its business and the detail of its trade mark and service mark registrations is all within the knowledge of the Complainant and it admits none of it save that the Complainant is engaged “in the business of landscape maintenance, pest control, cleaning, home inspection, disaster restoration.”
The Respondent contends that it is engaged in the business of providing non-core office functions and that the parties’ channels of trade and consumers are totally different. It contends that confusion is unlikely.
The Respondent contends that its company registration at the Indian Companies Registry gives it a vested right to the use of the ServiceMaster name. It contends that since the Domain Name “is part of the corporate name of the Respondent”, the facts of this case take the case into the realm of bona fide use of one’s own name.
As to the allegation by the Complainant that the Domain Name was registered and is being used in bad faith, the Respondent has this to say:
“As regards the averment that the Respondent’s domain name is not a fair use or that the registration is done in bad faith, it is submitted that most of these averments are verbose and repetitive. It is totally wrong for the Complainant to contend that the business meant for the Complainant had been diverted to the Respondent. As a matter of fact it is a Complainant (sic) which has been filed in bad faith without waiting for the decisions of more competent judicial and quasi-judicial forums”
The Response concludes:
“In view of our forgoing submissions, the arbitrators do not have competence to adjudicate the present matter and the Respondent is seeking a direction to restrain the Complainant from pursuing the arbitration proceedings in the City Civil Court Bangalore and Intellectual Property Appellate Board, Chennai. The orders in these applications are awaited within a month. The pendency of these proceedings are admitted by the Complainant themselves.”
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove 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 respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
First, however, it is necessary for the Panel to address the Respondent’s request for suspension of this administrative proceeding in light of the proceedings currently pending before the City Civil Court, Bangalore and the Intellectual Property Appellate Board, Chennai.
The Panel has not been supplied with any of the papers relating to the Indian proceedings, but they appear to constitute an opposition by the Complainant to the Respondent’s Indian trade mark application, an application by the Respondent to revoke the Complainant’s Indian trade mark registration(s) for non-use and applications by both parties for injunctive relief relating to the name or mark, SERVICEMASTER. According to the Respondent the injunctive relief sought by the Respondent is limited to use of the SERVICEMASTER name/mark for “office functions”, from which the Panel deduces that the Respondent accepts that the Complainant is free to use its name or mark in other fields of activity.
Finally, on this topic, the Respondent claims that the relief it is seeking includes an injunction to restrain the Complainant from pursuing “needless proceedings in inconvenient forums”.
Paragraph 18 of the Rules (Effect of Legal Proceedings) provides in sub-paragraph (a) that “in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
The Panel is not minded to suspend this administrative proceeding. The registry proceedings can only relate to the trade/service mark registrations/applications in issue and the substance of the court proceedings, as related by the Respondent, seems to be restricted to the use rather than the ownership of the name SERVICEMASTER.
In any event, however, proceedings under the Policy are merely an alternative method of resolving a particular category of dispute. They are not a substitute for court proceedings. The Panel is merely adjudicating the dispute relating to the Domain Name registration within the very narrow terms of the Policy, a policy to which the Respondent signed up on registering the Domain Name.
If the Panel thought that by proceeding to a decision in this case, it would in any way circumscribe or embarrass the Indian judicial and/or quasi-judicial authorities in the performance of their functions, the Panel would have no hesitation in suspending this proceeding. However, any court seized of the matter (whether now or subsequently) will come to its decision on its own and within its own terms of reference. Nothing that the Panel says need have any effect on that tribunal. If the Respondent objects to the Panel’s decision in this case, paragraph 4(k) of the Policy provides it with a judicial opportunity for reversing the effect of the decision.
The Panel regards this case as a simple, straightforward case eminently suitable for speedy resolution under the Policy. The Panel sees no reason why the outcome of this aspect of the dispute between the parties should be delayed pending the outcome of the Indian proceedings, proceedings which could well last for several years.
It is also worth noting that the Indian proceedings are concerned solely with the position in India, whereas the Policy, like the Internet, knows no territorial boundaries.
B. Identical or Confusingly Similar
The Panel is not impressed by the Respondent’s failure to admit the existence of the Complainant’s United States and Indian trade/service mark rights evidenced by copies of trade mark registration documents exhibited to the Complaint. The refusal to acknowledge the existence of those rights is particularly odd given that the Respondent has launched proceedings to revoke the Indian registrations. Until revoked, those rights remain valid and subsisting.
The Domain Name comprises the Complainant’s trade/service mark, SERVICEMASTER, the geographical indication, “India”, and the generic domain suffix. For the purpose of assessing identity and confusing similarity under the Policy, one can ignore the domain suffix. That leaves the Complainant’s trade/service mark and “India”.
The Panel has no difficulty in finding that someone seeing the Complainant’s trade/service mark in the Domain Name will assume the Domain Name to be associated with the Complainant’s mark. The Panel believes it very likely that such a person will believe the Domain Name to relate to an enterprise of the Complainant operating in India.
The Panel finds that the Domain Name is confusingly similar to a trade mark or service mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant’s case is very simple. It claims to be a very large, 50 year old, well-known company with a multi-billion turnover and 5,500 company-owned and franchised locations worldwide. It operates online through its website connected to the domain name, , which it has been using in the course of its business for about 10 years. The Respondent sets up business in India in 2004 providing services overlapping with the services provided by the Complainant (i.e. housekeeping, pest control and landscape maintenance services for businesses). It selects the same name (i.e. ServiceMaster) and looks around for a domain name. The Complainant contends that the Respondent must have come across the existence of the Complainant and its domain name, and its website before it registered the Domain Name. At the very least it would have selected the Complainant’s domain name in preference to the Domain Name had the former been available. The Complainant contends that registering and using the Domain Name with knowledge of the Complainant and its business cannot constitute a fair, bona fide use of the Domain Name such as to give the Respondent rights or legitimate interests in respect of the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
The Respondent attacks the unsupported evidence from the Complainant as to the size and scope of its business and the Panel has some sympathy with the Respondent on that score. If a party wishes to rely upon its fame, particularly its international fame, some supporting evidence is called for. All that the Panel has before it are the bare assertions in the Complaint (supported by similar claims on the Complainant’s website) and a list of international trade mark applications and registrations. The Panel visited the Complainant’s website and found an international link, which identified an Indian associate. That associate’s website contained no prominent reference to the Complainant. After some searching a link was found, but it appeared to be a link back to the US site.
However, there is much force in the Complainant’s argument that the Respondent must have been aware of the Complainant and its website before it registered the Domain Name. As the Complainant observes, it is not as if the Respondent trades as ServiceMaster India. It does not. It trades as ServiceMaster and the Panel finds it inconceivable that the Respondent will not have investigated the availability of the Complainant’s domain name before registering the Domain Name. Indeed the Response does not seek to suggest otherwise. The Panel also believes it likely that the Respondent would have conducted a search of the Indian trade mark register before proceeding, in which case it will have come across the Complainant’s 1993 Indian trade mark registration.
Anyone visiting the Complainant’s website will be in no doubt that the Complainant is a very substantial, well-established commercial operation.
The Respondent contends that its company registration at the Indian Companies Registry gives it a vested right to the use of the ServiceMaster name. It contends that since the Domain Name “is part of the corporate name of the Respondent”, its use of the Domain Name constitutes bona fide use of its own name. However, the Domain Name is self evidently not “part of the corporate name of the Respondent”.
Once one comes to the conclusion (as contended for by the Complainant and not denied by the Respondent) that the Respondent was aware of the existence of the Complainant and its trade mark at time of registration of the Domain Name, one has to question the Respondent’s bona fides. The Respondent must have known that a geographical addition to another’s trade mark as part of a domain name would do little to dispel the obvious risk of confusion. The Respondent must have been aware of the potential benefit of being thought to be the Indian end of the Complainant’s business.
The Panel finds that there was nothing bona fide about the Respondent’s adoption of the Domain Name and that the Respondent has no rights or legitimate interest in respect of the Domain Name.
D. Registered and Used in Bad Faith
Once one has found as the Panel has found that (a) the Domain Name is confusingly similar to the Complainant’s trade/service mark and (b) the Respondent selected it with knowledge of the Complainant’s rights and the risk of the confusion that use of the Domain Name would cause, it is not difficult to conclude that the Domain Name was registered and is being used in bad faith.
To the extent that the City Civil Court, Bangalore and the Intellectual Property Appellate Board, Chennai, the tribunals seized of the Indian proceedings between the parties, will be assessing likelihood of confusion in relation to the use of the SERVICEMASTER mark, they will be considering the position within in India. To what extent will consumers in India be likely to believe that the Respondent is in some way associated with the Complainant? The Panel is unable to answer that question. The evidence in this case provides no information on the extent of the Complainant’s use of that mark in India.
The Panel, on the other hand, is not confined to the position in India. If international businesses with interests in India and looking for the Complainant’s services in that country are deceived by the Domain Name, that is potentially relevant confusion for the purposes of the Policy.
The only country for which the Panel has any evidence as to the fame of the Complainant is the United States of America. The supporting documents for the Complainant’s contentions as to the nature and extent of its reputation and goodwill are sparse in the extreme. However, the Panel has been directed to the Complainant’s website and it seems plain to the Panel that the Complainant is, as it claims to be, a very substantial business. Websites are easy to construct and can be made to create whatever impression one wants them to impart, but in the Panel’s view, the Complainant’s website is far too complex for it to be a sham. Moreover, the Panel has had regard to the Complainant’s trade/service mark filing history, which is consistent with there having been a continuous business running under the ServiceMaster name in the United States of America for several decades. The Panel has also had regard to the fact that the Complainant’s Indian correspondent/associate firm’s website (accessible via the Complainant’s website) has a link to the Complainant’s site; not something which one would be likely to find in a sham business. Furthermore, as indicated in section 5B above, the Respondent admits that the Complainant is a genuine commercial enterprise.
The Panel believes it very likely that a business based in the United States of America and seeing the Domain Name will be likely to believe that it is a domain name of or associated with the Complainant. There must be many international businesses based within the United States of America with interests in India. If they are looking for the Complainant’s services in India, they may well come across the Domain Name and visit the Respondent’s site believing it to be a Domain Name/website of or associated with the Complainant. Thus, the Respondent will be likely to attract business otherwise intended for the Complainant and/or its Indian associate/correspondent.
The Respondent argues that even if that were to happen, the visitor to the Respondent’s website would not be deceived, because the Respondent’s logo and the style of the website are so very different from those of the Complainant. The Respondent also says that the Respondent’s customers and trade channels are so different from those of the Complainant that confusion is unlikely. However, the trade channel with which we are concerned is the Internet. It is a trade channel common to both parties. Both parties’ customers include businesses requiring inter alia property maintenance services, which include pest control services, landscaping services, emergency and housekeeping services. Both parties provide those services.
As to the format and style of the Respondent’s website, the Panel agrees that it is different from the format and style of the Complainant’s website, but there may be any number of reasons why a business may trade under a different format and style of logo in another country. For a person in the United States of America, familiar with the Complainant’s name, the name will be all-important. To them the name, ServiceMaster India, will indicate the Complainant in India. Moreover, even if the visitor is alerted to the possibility that the website connected to the Domain Name is not a website of or associated with the Complainant, the Domain Name will at that stage already have presented the Respondent with a business opportunity that it might not otherwise have had.
The Panel is satisfied that the Respondent adopted the Domain Name, aware of the likelihood that business opportunities would come its way on the back of the reputation and goodwill of the Complainant and indeed hoping for that result.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
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, , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Dated: August 4, 2008
Full & Egal Universal Law Academy