The Complainant is Mr. Rooter LLC of Waco, Texas, United States of America (“United States”), represented by FRKelly, Ireland.
The Respondents are David Doherty and Unbeatable Drain Cleaning Limited of Dublin, Ireland. 2. The Domain Names and Registrar
The disputed domain names , , , , , , and are registered with IE Domain Registry Limited (“IEDR”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2018 via email. On August 2, 2018, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain names. On August 3, 2018, IEDR transmitted by email to the Center its verification response confirming the Respondents as the registrants and providing contact details. The Complainant filed an amended Complaint on August 10, 2018 and on August 13, 2018 by courier.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Respondents of the Complaint, and the proceeding commenced on August 14, 2018. In accordance with the Rules, paragraph 5.1, the due date for Response was September 11, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 13, 2018.
The Center appointed Alistair Payne as the sole panelist in this matter on September 24, 2018. 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 the owner and licensor of various trade mark registrations for DRAIN DOCTOR, in particular in Ireland under registration number 200093, registered on July 1, 1996, and in the European Union under trade mark registration 001617026, registered on July 16, 2001. In Ireland the Complainant licenses the right to operate the DRAIN DOCTOR plumbing business to a master franchisee, A&T Drain Services Limited, who has operated the franchise as a separate business since 2006 from the website at the domain name .
The disputed domain name was registered in David Doherty’s name on August 23, 2016, and the disputed domain name was also registered in his name on August 2, 2017. The disputed domain name, was registered in Unbeatable Drain Cleaning Limited’s name on December 2, 2016 and the disputed domain names , , and were registered by Unbeatable Drain Cleaning Limited on December 8, 2016. The disputed domain name previously resolved to a website featuring the mark “Drain Doc” but as of the date of the Complaint the Respondents now appear to operate a website at the disputed domain name that features the “Drain Doc” mark “/Dublin‑Drain-Doc”. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns registered trade marks as noted above, in Ireland and in the European Union, for its DRAIN DOCTOR mark. It says that its Irish master licensee, A&T Drain Services Limited, owns and operates a website at the domain name . The Complainant submits that each of the disputed domain names are either identical or confusingly similar to the Complainant’s DRAIN DOCTOR trade mark registrations as each wholly contains the Complainant’s mark as the key and dominant element. It makes the following observations concerning the differences of each of the disputed domain names to the DRAIN DOCTOR mark:
- is identical;
- is confusingly similar because of the addition of an “s”;
- contains “doc” which is an abbreviation of “doctor” and this domain name is therefore confusingly similar;
- is confusingly similar due to the sole addition of the geographical name “Dublin”;
- is confusingly similar due to the sole addition of the geographical name “Dublin” and also the addition of an “s”;
- is confusingly similar due to the sole addition of the definite article.
The Complainant says that it has not authorised the Respondents to use the disputed domain names or to carry out any activities or business upon behalf of the Complainant.
The Complainant submits that the Respondents cannot demonstrate that before being put on notice of the Complainant’s interests, that they had made demonstrable good faith preparations to use any of the disputed domain names in connection with the good faith offering of goods or services, or the operation of a business and that the Complainant is in no way connected or affiliated with either of the Respondents. It says that the Respondents have no rights or legitimate interests in the disputed domain names in circumstances that they have no right to use the Complainant’s DRAIN DOCTOR mark.
As far as bad faith is concerned, the Complainant says that it is inconceivable that the Respondents were not aware of the Complainant’s business operating under the DRAIN DOCTOR mark at the time of registration of the disputed domain names. The Complainant says Mr. Doherty sought to register DRAIN DOC DRAINAGE & PLUMBING with the Irish Patents Office in 2016, which the Complainant opposed. The Respondents subsequently abandoned the trade mark application. The Complainant says that it first discovered the Respondents’ use of a DRAIN DOC logo on the website at the domain name and in January 2017 issued a cease and desist letter through its trade mark agents to Mr. Doherty, to which he responded through his solicitors on a “without prejudice” basis. The Complainant notes that at the date of the Complaint the Respondents continue to use DRAIN DOC at the website at “/Dublin-drain-doc”.
According to the Complainant, the disputed domain names were registered primarily for the purpose of selling the disputed domain names to the Complainant, or to a competitor of the Complainant, for valuable consideration in excess of the Respondents’ out of pocket costs. It says further that the registration of the disputed domain names is indicative of a pattern of conduct on the part of the Respondents of registering well known trade marks in corresponding domain names presumably with a view to selling the disputed domain names to the owners of these trade marks for sums in excess of their out-of-pocket expenses.
The Complainant also asserts that the Respondents have registered or are using the disputed domain names primarily for the purpose of interfering with or disrupting the business of the Complainant or in the alternative is using the disputed domain name intentionally attract Internet users to their website by creating confusion with the Complainant’s trade marks and the domain names in which the Complainant has rights.
Finally, the Complainant suggests that the Respondents intentionally provided misleading or false information when applying for the disputed domain names and says that all these factors combined are sufficient to demonstrate bad faith registration and use. B. Respondents
The Respondents did not reply to the Complaint. 6. Discussion and Findings A. Consolidation of Respondents
This case is brought in relation to seven separate domain names, each of which incorporate (in whole or in part) the DRAIN DOCTOR mark, and against two named respondents.
Consolidation of domain names and registrants in a single proceeding under the Policy are governed by the Rules.
Paragraph 3.2 of the Rules states “[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Paragraph 3.3 provides “[w]here two or more domain names are registered amongst two or more associated companies (within the meaning of the Companies Act 1963 (as amended)), the associated companies shall for the purposes of these Rules be treated as a single Registrant.” Lastly, paragraph 9.5 states “[a] Panel shall consider a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.”
The provisions for consolidation under the Rules mirror to a large extent those under the Uniform Domain Name Dispute Resolution Policy (“UDRP”). Panels under the Policy have previously considered relevant UDRP principles and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), except to the extent that the Policy diverges from the UDRP (see MAPFRE Assistance Agency Ireland v. Jason Evans, Car Protect Warranties, Ltd.,WIPO Case No. DIE2018-0002).
Previous UDRP panels have been prepared to consolidate cases against differing respondents under paragraphs 3(c) and 10(e) of the UDRP Rules (mirroring IEDR Rules, paragraphs 3.2 and 9.5), in circumstances that common control is being exercised over the disputed domain names or the websites to which the domain names resolve, and that consolidation would be fair and equitable to all parties (for example - Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281). Section 4.11.2 of the WIPO Overview 3.0 captures the consensus view of UDRP panels in determining whether a UDRP complaint against multiple respondents may be consolidated. In particular, the WIPO Overview 3.0 states:
“Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., or ), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).”
In the current circumstances, the Panel observes that David Doherty and Unbeatable Drain Cleaning Limited share the same email and physical addresses, and the Complainant has provided evidence that Mr. Doherty is a director of Unbeatable Drain Cleaning Limited. In these circumstances, the Panel infers that the disputed domain names are controlled by the same person or entity and that as a result and considering the aims and objectives of the Policy, it is in this case procedurally efficient and appropriate under the Rules to consolidate the cases into this single proceeding.
For completeness, the Panel considers that the differences between the UDRP and the IEDR Policies regarding consolidation, namely, the additional provision at paragraph 3.3 of the IEDR Rules relating to consolidation and associated companies, do not affect the Panel’s assessment of the propriety of consolidation under these circumstances. B. Identical or Confusingly Similar
The Complainant has demonstrated that it owns a trade mark registration for DRAIN DOCTOR in Ireland under registration number 200093, registered on July 1, 1996, and in the European Union under trade mark registration 001617026, registered on July 16, 2001. The trade mark registrations qualify as relevant “protected identifier[s]” in Ireland in terms of the Policy.
This trade mark is wholly incorporated into the domain names: , , , , and the . The additional word or letter elements in each of these disputed domain names in no way distinguish them from the Complainant’s DRAIN DOCTOR trade mark and the Panel finds that they are either identical or confusingly similar to the Complainant’s registered trade mark. The seventh disputed domain name, , contains the word “drain” and the word “doc” which is a commonly used abbreviation for “doctor”. As a consequence, the Panel finds that this disputed domain name is also confusingly similar to the Complainant’s DRAIN DOCTOR mark.
Accordingly, the Complaint succeeds under the first element of the Policy. C. Rights in Law or Legitimate Interests
The Complainant has submitted that it has not authorised the Respondents to use any of the disputed domain names, or to carry out any activities or business upon behalf of the Complainant and that it is in no way connected or affiliated with either of the Respondents. The Complainant has also submitted that there is no evidence that the Respondents have made demonstrable good faith preparations to use any of the disputed domain names in connection with the good faith offering of goods or services, or the operation of a business. It says that in circumstances that the Respondents have no rights to use the disputed domain names then they can have no rights or legitimate interests in them.
The Complainant has therefore made out a prima facie case that the Respondents have no rights or legitimate interests in each of the disputed domain names and the Respondents have failed to rebut that case. In these circumstances and additionally for the reasons set out under Part C below, the Panel finds that the Complaint also succeeds under this element of the Policy. D. Registered or Used in Bad Faith
The Policy requires that the Complainant demonstrates that the disputed domain names have been registered or used in bad faith.
The Panel notes that the Complainant’s European trade mark registration for DRAIN DOCTOR, as noted above, was registered in 2001 and that since 2006 the business has been operated by a master franchisee using the website “www.the”. The disputed domain names were registered over the period 2016-2017 by which time the Complainant’s franchised business in Ireland had been operating under the DRAIN DOCTOR mark for at least ten years. In these circumstances it seems more than likely that the Respondents must have been aware of the Complainant’s trade mark and website at the time of registration of each of the disputed domain names. As a result, the Panel infers that the Respondents registered each of the disputed domain names in bad faith.
In addition, the Complainant has submitted that the Respondents formerly used the domain name to resolve to a website at which they trade under the name “Drain Doc” and offer drain unblocking services in competition with those offered by the Complainant and its franchisees. By the date of filing of the Complaint the Respondents continued to trade under the “Drain Doc” name or name from a website at “/Dublin-Drain-Doc”.
Use of the disputed domain name in this way amounts to attempting intentionally to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark in terms of paragraph 2.1.4 of the Policy and amounts to evidence of registration and use of this disputed domain name in bad faith. In circumstances that the Respondents registered six other disputed domain names that all contain the Complainant’s DRAIN DOCTOR mark, the Panel finds that the Respondents embarked upon a pattern of conduct that seeks to either prevent the Complainant from reflecting its DRAIN DOCTOR mark in corresponding domain names in terms of paragraph 2.1.2 of the Policy, or which amounts to registering and using the disputed domain names for the purposes of interfering with or disrupting the Complainant’s business in terms of paragraph 2.1.3 of the Policy.
As a consequence, the Panel finds that the Respondents registered or used each of the disputed domain names in bad faith and the Complaint also succeeds under this element of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain names , , , , , , and be transferred to the Complainant.
Alistair Payne
Sole Panelist
Dated: October 12, 2018
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