The Complainant is ServiceMaster Brands L.L.C. of Burlington, Vermont, United States of America (“USA”), represented internally.
The Respondent is Service Master sarl, of Hadath, Lebanon. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Namebay (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2012.
The Center transmitted its request for registrar verification to the Registrar on June 18, 2012, and corrected a typographical error in the specified domain name on June 19, 2012. The Registrar replied on June 21, 2012, stating that it had not received a copy of the complaint, that the Domain Name was registered with it by the Respondent, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied, that the Domain Name was registered by the current registrant on September 8, 2010, and would expire on September 8, 2012, that it had been placed on Registrar Lock, and that the language of the registration agreement was French or English. The Registrar also provided the full contact details held on its WhoIs database in respect of the Domain Name.
The Center asked the Registrar on June 24, 2012, to clarify whether the language of the registration agreement was French or English. The Registrar replied on June 26, 2012, stating that the registration agreement was in French, but adding that the client can read the English version. The Center drew this to the attention of the parties on June 27, 2012, and requested the Complainant to provide satisfactory evidence of an agreement between the parties that the proceedings should be in English or to submit the Complaint in French or to submit a request for English to be the language of the proceedings with supporting arguments and materials, in each case by June 30, 2012. In the same email the Center asked the Respondent to submit any comments on the Complainant’s response by July 2, 2012, and stated that if the Complainant requested that the proceedings be in English and the Respondent did not reply by this date, the Center would proceed on the basis that the Respondent had no objection to the proceedings being in English. This communication was sent to the parties in both English and French.
The Complainant submitted a reasoned request that the proceedings be in English on June 29, 2012. The Complainant pointed out that the Respondent used English and Arabic, but not French, on the website located by the Domain Name, that it had chosen a business name and domain name incorporating the Complainant’s English language trademark, and that it had corresponded with the Complainant’s licensee in Lebanon in English. The Respondent did not submit any comments in response.
On July 4, 2012, the Center asked the Complainant to confirm that a copy of the Complaint had been sent to the Respondent at a contact address confirmed by the Registrar in accordance with paragraphs 2(b) and 3(b)(xii) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) and paragraphs 3, 4 and 12 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). The Complainant replied on July 5, 2012, confirming that it had sent the cover sheet, Complaint, cover sheet and all annexes, and subsequently the language request, to the Respondent at its address as stated in the Registrar’s WhoIs database by Federal Express, which had confirmed that the shipments were received on June 18 and July 2 respectively.
The Complainant also endeavoured to send electronic copies of the cover sheet, Complaint and annexes to the Respondent on July 5, 2012, but the email address for the Respondent stated in the Registrar’s WhoIs database was defective.
The Center verified that the Complaint satisfied the formal requirements of the UDRP, the Rules and the Supplemental Rules.
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 6, 2012. Transmission of the Complaint to the email address stated for the technical, administrative and billing contacts in the Registrar’s WhoIs database was apparently successful.
In accordance with paragraph 5(a) of the Rules, the due date for Response was July 26, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2012.
The Center appointed Jonathan Turner as the sole panelist in this matter on August 1, 2012. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent in accordance with the contact details on the Registrar’s WhoIs database, and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules. 4. Procedural Ruling
Paragraph 11 of the Rules provides that unless otherwise agreed by the parties or otherwise specified in the registration agreement, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise having regard to the circumstances.
The Panel notes that the domain name is Anglophone, that the content of the Respondent’s website was in English and Arabic, that the Respondent has promoted its services by email in English, and that the Respondent did not raise any objection to the Complainant’s request that the language of the proceeding be English. In these circumstances, it does not appear to the Panel that the Respondent will be prejudiced by the language of the proceeding being English. On the other hand, it was not apparent to the Complainant when it filed the Complaint that the registration agreement was in French (since the Registrar’s website provided the agreement in both French and English) and significant additional expense would now be incurred if the Complaint had to be translated into French.
In all the circumstances, the Panel considers that it is substantially more appropriate that the proceeding be conducted in English and accordingly determines that the language of the proceeding shall be English. 5. Factual Background
The Complainant provides residential and commercial cleaning and disaster restoration services under the marks ServiceMaster and ServiceMaster Clean through over 4500 franchise locations around the world, including in Lebanon. The Complainant had operating revenues of over $3.2 billion in 2011, of which 4% related to the ServiceMaster Clean segment of its operations. The Complainant has registered ServiceMaster and ServiceMaster Clean as trademarks in numerous countries including Lebanon (where it registered the mark in 1992).
The Complainant has used its ServiceMaster mark in the USA since at least 1952 and has operated through licensees in Lebanon since at least 1999. The Complainant has also registered domain names with “servicemaster” as the second level domain in various generic top level domains, including “.com”, and uses them to promote its business through its websites.
The Respondent registered the Domain Name on September 8, 2010, and has directed it to a website promoting cleaning, maintenance and public services under the name Service Master sarl. This website states that the Respondent was founded in Lebanon in 2010 and spent more than 27 years working in these fields. 6. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its registered mark ServiceMaster from which it differs only in the addition of a hyphen followed by the two-letter country code for Lebanon and the generic top level domain suffix.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that it has not authorized the Respondent to use its trademark and that the Respondent’s use of this mark is not bona fide.
The Complainant alleges that the Respondent registered and is using the Domain Name in bad faith. The Complainant contends that the Respondent must have known of the Complainant’s business when it decided to trade in the same field under the same name and that is using the Domain Name to deceive consumers seeking the Complainant’s services.
The Complainant requests a decision that the Domain Name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 7. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (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. It is appropriate to consider each of these requirements in turn. A. Identical or Confusingly Similar
The Panel finds that the Domain Name is confusingly similar to the mark ServiceMaster in which the Complainant has registered rights. The Domain Name differs from this mark only in the addition of the two-letter country code for Lebanon, separated from the mark by a hyphen, followed by the generic top level domain suffix. In the Panel’s view, many Internet users would assume that the Domain Name identifies a website of the Complainant relating to its business in Lebanon. The first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests
The Panel accepts the undisputed evidence of the Complainant that the Respondent must have known of the Complainant’s mark and reputation when it established a business operating in the same field under essentially the same name in Lebanon in 2010, long after the Complainant had extended its business internationally including in Lebanon. This being so, the Complainant must also have known that its use of this name would be liable to deceive and it follows that this use has been in bad faith and not such as to give rise to any rights or legitimate interests within the meaning of paragraph 4(a)(ii) of the UDRP.
In all the circumstances the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. The second requirement of the UDRP is satisfied. C. Registered and Used in Bad Faith
On the undisputed evidence, the Panel finds that by using the Domain Name for its website promoting its business under the name “Service Master”, the Respondent has intentionally attempted to attract Internet users to that website by creating a likelihood of confusion with the Complainant’s ServiceMaster mark as to the source, sponsorship, affiliation or endorsement of that website. Furthermore it has done this for commercial gain by attracting customers for its cleaning services, in many cases by misleading them into believing that it is part of or connected with or franchised by the Complainant.
In accordance with paragraph 4(b)(iv) of the UDRP, these circumstances constitute evidence that the Domain Name was registered and is being used in bad faith. There is no evidence before the Panel contradicting this presumption. The Panel therefore concludes that the Domain Name was registered and is being used in bad faith. 8. Decision
For 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.
Jonathan Turner
Sole Panelist
Date: August 8, 2012
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