WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Clockwork IP, LLC, One Hour Air Conditioning Franchising, LLC v. Elena Wallace Case No. D2009-0485 1. The Parties
Complainants are Clockwork IP, LLC and One Hour Air Conditioning Franchising, LLC of Sarasota, Florida (OHACF), United States of America, represented by Law Offices of Annette P. Heller, United States.
Respondent is Elena Wallace of Rowlett, Texas, United States, appearing pro se. 2. The Domain Names and Registrar
The disputed domain names and are registered with Intercosmos Media Group d/b/a directNIC.com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2009. On April 15, 2009, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain names. On April 15, 2009, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2009. The Response was filed with the Center on May 10, 2009.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on May 18, 2009. 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
Complainant Clockwork IP, LLC is an intellectual property holding company that is the owner of the trademarks listed below, which it licenses to One Hour Air Conditioning Franchising, LLC for use in connection with heating and air conditioning services:
ONE HOUR & design (Reg. No. 2,916,966) for “repair, maintenance, and installation services in the field of heating, ventilation, and air conditioning,” registered January 11, 2005.
ONE HOUR (Reg. No. 3,033,873) for “repair, maintenance, and installation services in the field of heating, ventilation and air conditioning,” registered December 27, 2005.
ONE HOUR HEATING & AIR CONDITIONING & design (Reg. No. 3,530,593) for “repair, maintenance, and installation services in the field of heating, ventilation, and air conditioning,” registered November 11, 2008.
Complainant Clockwork IP, LLC also owns domain name registrations for and . Complainant contends that it has used its ONE HOUR marks since 2000.
The disputed domain names were originally registered in July 2007 by an organization called Power Smart Now, located in Sunnyvale, Texas, United States. Mr. Wallace was listed as the administrative and technical contact person. Mr. Wallace is Respondent's ex-husband. Mr. Wallace registered the disputed domain names seven years after OHACF began using the One Hour Marks in 2000, and approximately two years after OHACF obtained registration of the ONE HOUR marks.
The disputed domain names were registered approximately six weeks after Complainants had sent a cease and desist notice to Wallace concerning his use of the phrase “One Hour” in association with his advertising of residential heading and cooling services.
In late 2007, OHACF filed suit against Mr. Wallace in the United States District Court for the Northern District of Texas alleging trademark infringement, unfair competition and trademark dilution. During that proceeding, OHACF learned that there was a business relationship between Wallace and Respondent. In mid-2008, OHACF and Wallace settled the case out of court. Complainants did not provide any documents related to this proceeding. Complainants claim that Wallace failed to disclose to OHACF that he had registered the disputed domain names back in July 2007.
In February 2009, Mr. Wallace transferred the disputed domain names to Respondent. Respondent now operates active websites at the disputed domains that advertise residential heating and air conditioning services identical to those provided by OHACF under the ONE HOUR marks.
Respondent's business as indicated in her website is known as A-Anderson A/C Heating & Electric. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain names are confusingly similar to Complainant's trademarks, Respondent lacks rights or legitimate interests in the disputed domain names and that the disputed domain names have been registered and used in bad faith. B. Respondent
Respondent contends that “one hour” and “air conditioning repair” are common phrases that are widely used in connection with air conditioning repair services, and that Respondent has used these phrases for many years prior to Complainants' adoption and registration of their marks. Respondent further contends that she has never attempted to sell the disputed domain names to Complainant and has never engaged in a pattern of conduct showing bad faith. Respondent contends that the disputed domain names were not registered primarily for the purpose of disrupting the business of a competitor.
Respondent admits that Mr. Wallace is her ex-husband, and that she divorced him in 2002. Respondent claims that as a result of her success in the divorce proceedings, she now owns all rights, property and title in the business known as A-Anderson. The disputed domain names were transferred to her pursuant to the requirements of the divorce decree.
Respondent submitted evidence of Respondent's business history since 1993, including advertisements using the term “One Hour” dating back to the mid 1990-s, property transfer agreements, minutes of meetings, letters of assignment and a divorce decree indicating that Respondent is the successor of the air conditioning business previously owned with her husband Mr. Wallace. Respondent was never a party to the lawsuit which Complainants filed against Mr. Wallace in 2007.
Respondent contends that she and her husband, prior to their divorce, had operated an air conditioning and electric service business in the same vicinity since 1985, whereas Complainant's franchisee has only been in its current location since 2005.
All Internet users who land on Respondent's website see Respondent's Anderson company name, its logo and either “One hour A/C Service”, “One Hour Electric Service,” or “One Hour Heater Service”.
Respondent's use of “One Hour” or “1-Hour” dates back to the 1990s, as evidenced by the commercial advertising submitted by Respondent. Respondent contends that she did not register or acquire the domain names primarily for the purpose of selling, renting or otherwise transferring the domain name registrations to Complainant. 6. Discussion and Findings
In order to succeed in their claim, Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and used in bad faith.
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”. A. Identical or Confusingly Similar
Complainants have demonstrated that they own rights in the trademark ONE HOUR. The disputed domain names incorporate Complainants' ONE HOUR trademark in its entirety.
Applying the limited confusing similarity analysis of a UDRP proceeding, which requires a straight visual comparison between the Complainants' mark and the disputed domain names, with no consideration of marketplace factors, the disputed domain names include the federally registered ONE HOUR mark in its entirety, with the addition of the highly descriptive words “air conditioning repair” and “air conditioning repair service.” Thus, the Panel finds that, for the purpose of this UDRP proceeding, the domain names are confusingly similar to a trademark or service mark in which the Complainants have rights. B. Rights or Legitimate Interests; Registered and Used in Bad Faith
There is no evidence in the present record establishing that Respondent is a cybersquatter who registered and used the disputed domain names in bad faith. Respondent argues that that she has a well-established air conditioning repair business that has been in effect since 1985, and has advertised using the “One-Hour” and “1-Hour” phrases since at least the mid-1990s, and has submitted some evidence in support of this claim.
While Complainants state that they filed a trademark infringement lawsuit in 2007 against Respondent's ex-husband it would appear that Respondent was not a party to that lawsuit. Complainants did not submit any documents relating to this lawsuit. Moreover, according to the Response exhibits, prior to the filing of the lawsuit, Respondent had already become the sole owner of the air conditioning business previously owned with her husband.
In any event, UDRP proceedings are for clear cases of cybersquatting, not for resolving trademark infringement and/or trademark dilution disputes or other matters more appropriately dealt with through the courts. See Metabolife International v. Spectrum Labs,WIPO Case No. D2000-0509, fn.1; ICANN, Second Staff Report on Implementation Documents for Uniform Dispute Resolution Policy, Section 4.1(c) (October 24, 1999), at “”) (“The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of ‘abusive registrations'. “The policy relegates all ‘legitimate' disputes to the courts.”). In the present case it is not clear to this Panel that an abusive registration has occurred.
The Panel finds there is no evidence in the provided record to indicate that Respondent has attempted to sell the disputed domain names to the Complainant. Nor is there any evidence establishing that Respondent has engaged in a pattern of conduct showing bad faith. The disputed domain names do not appear to have been registered primarily for the purpose of disrupting the business of a competitor. Respondent contends that she has operated an air conditioning service and repair business for 16 years and has, at least in part, used the phrases “One-Hour” or “1-Hour” in advertising to describe those services since prior to Complainant's adoption and registration of its trademarks. Respondent submitted samples of such advertising dating back to the mid 1990s. The domain names are, at least on the face of it, consistent with Respondent's use of those terms. There is no evidence in the record establishing that Respondent obtained the disputed domain names in an intentional attempt to attract for commercial gain Internet users to her website by creating a likelihood of confusion with Complainant's marks.
The Panel finds that the facts of this dispute are more appropriate for the courts rather than the streamlined dispute-resolution procedure intended for the narrow class of cases involving cybersquatters.
Accordingly, the Panel finds that Complainants have not succeeded in these proceedings in establishing the second and third elements of the Policy. This finding in no way prevents the parties from pursuing the matter further through the courts should they wish to do so.
That is not to say that the Panel accepts all of Respondent's claims uncritically, or that there are not certain aspects of this case which with the benefit of cross-examination in a court, may yield a clearer picture. But ultimately the burden of proof in the present proceeding falls on Complainant and the Panel finds that burden has not been carried here. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Lynda J. Zadra-Symes
Sole Panelist
Dated: June 1, 2009
Full & Egal Universal Law Academy