The Complainant is A.B.C. Carpet Co., Inc. of New York, New York, United States of America (“USA” or “US”), represented by Powley & Gibson, P.C., USA.
The Respondent is Ran Keren of Flushing, New York, USA / Domains By Proxy, LLC, of Scottsdale, Arizona, USA, self-represented.
The disputed domain name <abcrug.net> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on January 15, 2016. On January 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 19, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 20, 2016 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 January 25, 2016.
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 January 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2016. The Response was filed with the Center on January 27, 2016.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 29, 2016. 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.
The Complainant is a business corporation organized under the laws of the US state of New York. According to the Complaint, the Complainant has been in the business of selling carpets, rugs, and other home furnishings since 1897. In addition to sales through its retail stores in New York, New Jersey, and Florida, the Complainant fulfills orders from customers in all 50 US states, with total sales of some USD 300 million over the most recent five-year period. The record shows that the Complainant advertises regularly in national and regional print media, on television in the greater New York metropolitan area, in New York taxicabs, on social media sites, on its website at “www.abchome.com”, and on a number of third-party home furnishings and design websites.
The Complainant holds several relevant US registered trademarks:
MARK | REGISTRATION NUMBER | REGISTRATION DATE |
|
ABC (standard characters) |
2193567 |
October 6, 1998 |
|
ABC CARPET & HOME (words and design) |
2185853 |
September 1, 1998 |
|
ABC CARPET & HOME (words and design) |
2185854 |
September 1, 1998 |
|
ABC (letters and design) |
2212531 |
December 22, 1998 |
|
ABC (standard characters) |
3852639 |
September 28, 2010 |
|
ABC CARPET & HOME (words and design) |
3852640 |
September 28, 2010 |
|
ABC CARPET AND HOME (words and design) |
4148807 |
May 9, 2012 |
In the design marks, the letters “ABC” or the words “ABC CARPET & HOME” are the predominant elements.
The marks appear in the Complainant’s extensive advertising. In addition, the record shows that the Complainant and its products have featured in numerous print and online articles about home furnishings.
The Complaint states that since 1990 an exclusive licensee of the Complainant has been authorized to use the marks ABC and ABC RUG AND CARPET CLEANING in connection with carpet cleaning services. The Complaint does not identify the licensee by name but attaches screenshots of the website advertising the licensee’s services at “www.abchomecare.com”. This website is headed “abc carpet & home”, similar to the Complainant’s website and using the same fonts and colors. The licensee’s carpet cleaning services are also advertised in the Complainant’s retail stores, as well as in promotional mailings and emails.
According to the Registrar, the Domain Name was created on June 10, 2010. It was registered in the name of the Registrar’s domain privacy service, which asserts no interest in the current proceeding. The Registrar identifies Mr. Keren as the registrant, with an administrative contact at ABC Rug Cleaning in Flushing, New York. Accordingly, in this Decision, the term “Respondent” refers to Mr. Keren.
The Domain Name redirects visitors to the website “www.abccarpet-cleaning.com” (the “Respondent’s website”). The Respondent’s website is headed “ABC Rug Cleaning” and advertises carpet cleaning services in the greater New York City area. According to the website, ABC Rug Cleaning “was founded in 1973”. The online corporations database operated by the New York Department of State shows that “ABC Rug Cleaning Service, Inc.” was incorporated in April 2008, with the same postal address given for Mr. Keren in the Domain Name registration.
The Complainant learned of the Respondent’s use of the Domain Name in 2015. The Complainant sent a cease-and-desist letter, and the Respondent denied any infringement. This proceeding followed.
The Panel notes that the current proceeding is factually related to another pending UDRP proceeding, A.B.C. Carpet Co., Inc. v. Perfect Privacy, LLC / Ofer Shabo, abc li carpet cleaning, WIPO Case No. D2016‑0209 (“A.B.C. – Shabo”). The domain name at issue in that proceeding, <abccarpet-cleaning.com>, also redirects to the Respondent’s website using that domain name. Moreover, the state database listing for ABC Rug Cleaning Service, Inc. lists Mr. Shabo as its registered agent. The Respondents in both proceedings submitted the identical informal response to the Center, over the name “ABC Carpet Cleaning”. The Panel concludes that Mr. Keren and Mr. Shabo are both involved in that business.
The Complainant contends that the Domain Name is confusingly similar to its ABC marks. The Complainant asserts that there is no evidence that the Respondent has in fact operated a business with a corresponding name since 1973 and argues that, in any event, the Respondent could not be said to operate a bona fide business with names confusingly similar to the Complainant’s marks.
The Complainant concludes that the Respondent registered and used the Domain Name in a bad faith effort to mislead Internet users for commercial gain.
“ABC Carpet Cleaning” submitted an informal response to the Complaint in the form of an email to the Center dated January 27, 2016. Apart from attaching details about the Complainant’s design trademarks, the response is as follows:
“Our copywriting all original.
We never use any of the Trademark logo or name of abc carpet and home!
We never said or mislead anyone to believe that we are affiliated with abc carpet and home!
‘Abc Carpet and home’ in fact 99% furniture store and we are 99% carpet cleaning service company.
Abc carpet and home doesn’t hold any right on the name ‘abc carpet cleaning’!!!! infect they misleading you to think that they have the right on the name but it’s totally false when you get into the details of the Trademark (see attached pdf). We invest in advertising over $400,000 yearly. Abc Carpet and home do not invest $1 on cleaning and restoration services. Make a long story short we sell different product under our name only without mislead anyone!!!!!”
This email was not signed by an individual, nor was it submitted with a certificate of accuracy as required by the Rules, paragraph 5(b)(viii). However, “ABC Carpet Cleaning” confirmed in a second email to the Center that the above message was intended to be the complete Response.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The Complainant holds registered US standard-character trademarks for ABC, as well as design marks incorporating the letters “ABC” or the words “ABC CARPET & HOME”. The Complaint also states that since 1990 an exclusive licensee of the Complainant has been authorized to use the marks ABC and ABC RUG AND CARPET CLEANING in connection with carpet cleaning services. The record does not establish, however, that the Complainant has a trademark registration for ABC RUG & CARPET CLEANING or has used it as a common law mark. Hence, for purposes of this Decision, the term “Complainant’s marks” refers to the marks ABC and ABC CARPET & HOME.
The first element of a UDRP complaint “serves essentially as a standing requirement” and entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. The Complainant’s registered marks suffice to support this Complaint, as the Domain Name incorporates the “ABC” string and adds the generic word “rug.” This generic addition does not avoid confusion, particularly since the Complainant sells rugs and “rug” is synonymous with the word “carpet” found in the Complainant’s name and in some of the Complainant’s marks.
The Respondent suggests that there is no confusing similarity because the parties are in different lines of business, one selling carpets and home furnishings and the other cleaning carpets (although, as noted above, the Complainant also licenses its marks to a carpet cleaning service). This argument may be taken into consideration under the second and third elements of the Complaint, but it does not affect the Panel’s conclusion that the Complainant has established standing and prevails on the first element.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this issue shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
Here, the Complainant has made a prima facie case by demonstrating trademark rights in ABC and ABC HOME & CARPET and showing that the Respondent used a confusingly similar Domain Name to advertise a business that competes with the Complainant’s trademark licensee.
The Response insists that the Domain Name is used for a bona fide carpet cleaning business. The Respondent’s emails to the Center were sent in the name of “ABC Carpet Cleaning” (the Respondent’s website at “www.abccarpet-cleaning.com” is actually headed “ABC Rug Cleaning”). The Respondent’s website states that the business was founded in 1973, although the Respondent has offered no evidence to establish that as a fact. The online corporations database operated by the New York Department of State shows that “ABC Rug Cleaning Service, Inc.”, a business at the same postal address shown in the registration of the Domain Name, was incorporated in April 2008. In sum, the Respondent uses the Domain Name for a carpet cleaning business with a similar name, and it appears likely that this business was established at least by 2008, two years before the registration of the Domain Name. This could represent a legitimate interest in the Domain Name, so long as the real intent behind both the business name and the Domain Name was not to engender confusion with the Complainant’s ABC trademarks, as the Complainant contends. That is an issue best addressed below, in the discussion of bad faith.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Respondent does not deny prior awareness of the Complainant and its well-advertised marks. It is probable that the Respondent, in the carpet cleaning business in greater New York, would know about one of the area’s leading carpet retailers. The Respondent’s argument instead is that the two are in separate businesses, and that the Respondent is not misleading consumers by using “ABC” in its name and Domain Name. That argument is blurred somewhat by the fact that the Complainant licenses an unnamed third party to offer carpet cleaning and repair services and advertises those services in the Complainant’s retail stores, but that is presumably not the Complainant’s primary business. The question is whether the Respondent likely chose an “ABC” company name and Domain Name in order to capitalize on the reputation associated with the Complainant’s ABC mark.
In fact, the Complainant’s ABC mark is not inherently distinctive. Many businesses use “ABC”, the first three letters of the alphabet, for the first part of their names. The “ABCs” are the basics or fundamentals of a subject (see the entries at Merriam-Webster.com and Dictionary.com, for example), and that string of letters ensures a high place in alphabetical directory listings. Thus, the string has intrinsic value for a potentially endless array of businesses. The Panel notes that several “ABC” businesses sell carpets or carpet cleaning services in the greater New York area. The New York State corporations database lists the following businesses licensed to do business in New York: ABC Rug and Cleaning Service Inc.; ABC Rug Cleaning & Repair Inc.; ABC Rug Cleaning Service Inc. (apparently the Respondent’s company); ABC Rugs Cleaning.com Inc.; ABC Carpet Cleaning, Inc.; ABC Carpet Discount Center Inc; ABC Carpet of New Jersey LLC; as well as A.B.C. Carpet & Home Inc. (the Complainant) and A.B.C. Carpet Co. Inc. (apparently related to the Complainant). A search engine query shows others with similar names in the New York metropolitan area, including ABC Carpet Cleaning Brooklyn. Several of these companies have websites with disclaimers indicating that they are not affiliated with other “ABC companies”, presumably to avoid confusion among the plethora of “ABC” companies involved in selling or cleaning carpets in the New York City area.
The Complaint observes that the Complainant has recuperated other domain names from third parties in UDRP proceedings. Two of these proceedings involved domain names similar to the words found in the Complainant’s distinctive ABC CARPET & HOME design marks, not the more generic ABC mark. See A.B.C. Carpet Co., Inc. v. Tom Boltz, et al., WIPO Case No. D2001-0531 (June 1, 2001) (transferring the domain names <abccarpetandhome.org> and <abccarpetandhome.net>); A.B.C. Carpet Co., Inc. v. Helen Gladstone, WIPO Case No. D2001-0521 (July 6, 2001) (transferring the domain names <abccarpetandhome.com>, <abccarpet-home.com>, and <abccarpet-home.net>. The third and more recent proceeding, A.B.C. Carpet Co., Inc. v. ABC Carpet & Rug Repair Services, WIPO Case No. D2011-0773 (July 28, 2011) involved the domain name <abccarpetandrugcare.com>. However, the record in that proceeding indicated that the respondent had operated for forty years under the name “Oriental Rug Care New York” rather than any name corresponding to the domain name at issue. This contrasts with the current proceeding, where the evidence indicates that the Respondent established an “ABC” business two years before registering the Domain Name.
The Complainant does not use the word “rug” in any of its marks, yet that is the word used with “ABC” in both the Respondent’s company name and in the associated Domain Name (although the Respondent uses “carpet” as well in its correspondence and on its website). As there are many “ABC” companies dealing with rugs or carpets and carpet cleaning in New York, it cannot be presumed that consumers would automatically associate “abcrug” with the Complainant A.B.C. Carpet & Home. Neither the Domain Name nor the Respondent’s website seem designed to mimic the Complainant’s ABC CARPET & HOME marks or website. Moreover, the Respondent’s business focusses on carpet cleaning and repair, while the Complainant is primarily in the business of retail sales. For all these reasons, it is not evident that the Respondent, despite its denials, must have chosen “abcrug” because those words would attract Internet users seeking the Complainant’s website.
The Panel notes that three of the Complainant’s licensees have successfully sued persons unrelated to the current Respondent under US trademark law, including a claim under the US federal Anticybersquatting Consumer Protection Act (“ACPA”) concerning the similar domain name <abcrugcleaners.com>. ABC Rug and Carpet Cleaning, Inc., et al. v. ABC Rug Cleaners, Inc., et al., Case 1:08-cv-05737, Findings of Fact and Conclusions of Law (US District Court, SDNY, Feb. 10, 2010). That decision followed evidentiary discovery and a bench trial where witnesses were questioned before a judge, procedures not contemplated for an expeditious UDRP proceeding.
Here, the Complainant has the burden of persuasion on a necessarily limited record. The Panel concludes that it has not met this burden, on this record, with respect to the second and third elements of the Complaint. This decision is, of course, without prejudice to any other legal remedies that the Complainant may choose to pursue. See Policy, paragraph 4(k).
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Date: March 4, 2016