The Complainant is Orkin Expansion, Inc., United States of America (“United States”), represented by Arnall Golden Gregory LLP, United States.
The Respondent is Orkinz, Orkins Company, Egypt / amr mokhtar, Egypt / Domain Administrator, See PrivacyGuardian.org, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2021. On July 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 21, 2021, 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 July 26, 2021, 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 July 26, 2021.
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 August 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2021. The Respondent sent informal email communications on August 15, 2021. The Center informed the Parties of its commencement of Panel appointment process on August 31, 2021.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on September 20, 2021. 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 BackgroundThe Complainant has been operating in the field of pest control services for 120 years. The Complainant owns many trademark registrations for the trademark ORKIN such as;
1. United States trademark registration No. 568404 registered on December 23, 1952;
2. Egyptian trademark registration No. 236943 registered on August 21, 2011.
The disputed domain name was registered by the Respondent on June 14, 2016 and resolves to a website which offers pest control services.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant owns various trademark registrations for the trademark ORKIN including a registration in Egypt where the Respondent seems to be operating and offering his services. The disputed domain name resolves to a website which displays marks identical to the Complainant’s trademark ORKIN (including its Arabic version). Through the website, the Respondent is offering pest control services. The disputed domain name contains the Complainant’s trademark ORKIN adding to it the letter “z” which does not serve in differentiating the two marks phonetically.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not authorized by the Complainant to use its trademark as part of the domain name nor is he affiliated with the Complainant. Prior to the registration of the domain name, the Respondent did not provide services or carry any business under the names ORKIN, ORKINZ, or ORKINS. There is no bona fide offering of goods or services. The Respondent is using the disputed domain name in order to divert customers from the Complainant.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered with the intent to create confusion with the Complainant in order to direct Internet users for commercial gain. The Respondent is using the Complainant’s trademark on its website.
B. RespondentThe Respondent sent an email stating first that he did not know what this dispute was about, and another (in Arabic) stating that his logo was different than the Complainant’s and that he operated in Egypt but did not otherwise make a submission setting out any points that could be reasonably considered by the Panel.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant owns trademark registrations for the trademark ORKIN. The Panel is satisfied that the Complainant has established its ownership of the trademark ORKIN.
The disputed domain name incorporates the Complainant’s trademarks ORKIN in its entirety and adds to it the letter “z”. Adding the letter “z” does not eliminate confusing similarity. It is established by prior UDRP panels that when a domain name incorporates a complainant’s registered trademark, such incorporation is sufficient to establish identity or confusing similarity for the purposes of the Policy.
The generic Top-Level Domain (“gTLD”) “.com” should typically be ignored when assessing confusing similarity as established by prior UDRP decisions.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent.
In the instant case, the Complainant asserts that the Respondent is not affiliated with nor authorized by the Complainant to use its trademark and that the disputed domain name in an intentional misspelling thereof. Therefore, a prima facie case being established, it is for the Respondent to prove that it has rights or legitimate interests. The Respondent has not been able to prove any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Respondent must have been aware of the Complainant’s trademark; 1. The Complainant, according to their website, has been in operation since 1901, i.e., 120 years ago and the Complainant has registered its trademark in the United States in 1952, i.e., 69 years ago. The disputed domain name was registered only in 2016. 2. The Complainant’s business is pest control services and the disputed domain name resolves to a website which offers the same services. Given the above, the Panel believes that the Respondent has registered the disputed domain name in order to trade off the reputation of the Complainant and its trademark and attract Internet users for commercial gain.
Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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,
Nayiri Boghossian
Sole Panelist
Date: October 4, 2021