In what I consider a very troubling and horrible decision, A one member UDRP panel has awarded a domain names welldonebbqs.com and welldonebbqcleaning.com to a Complainant who didn’t have a registered trademark, on the basis doing a whopping $11,000 in gross revenue, having $1,000 in a bank account and distributing 2,000 flyers.

I have comments that follow this really bad decision.

“Complainant is a young man who, whilst still at University, enrolled in the Province of Ontario’s Summer Company Program. This program provides funding for budding entrepreneurs to open their own businesses provided the enrollee complies with certain conditions. He filed a comprehensive Business Plan with the Government of Ontario in May 2010 naming his business “WellDone BBQs” and at about the same time he opened a bank account under this name”.

As anticipated in his Business Plan, Complainant had printed and circulated some 2000 brochures advertising his cleaning services for barbeques under the name Well Done BBQs.

These brochures were distributed in several neighborhoods of Toronto, including to where Respondent operates a competitive business”.

Complainant also distributed a number of business cards in the name of Well Done BBQs. ”

“Both the brochures and the cards displayed only the name of the business and not that of Complainant.”

“In that first year, Complainant secured 61 customers and revenues in excess of $11,000, and the Government of Ontario, having recognized Complainant’s efforts and his compliance with its Program, rewarded him with $3,000

On December 30, 2010, Complainant registered the domain name welldonebbq.com.

He was unable to register the true name of his company since by that time Respondent had already registered the first of the disputed domain names welldonebbqs.com.

Complainant contends that Respondent clearly recognized that his business operated as a barbecue cleaning service, because at the same time they registered the second of the disputed domain names welldonebbqcleaning.com.

“Complainant contends that the phrase “Well Done BBQs” is distinctive, it is novel, it does not correspond to any common phrase and it is clear that Respondent did not register either of the two disputed domain names by happenstance.”

“He contends that Respondent has made a purposeful attempt to interfere with his business by registering two domain names that are nearly identical to his own name and mark.”

Complainant further contends that Respondent has no rights or legitimate interest in either of the disputed domain name because:
·        Complainant had common law rights prior to the registration of both of the disputed domain names;
·        Respondent is a competitor of Complainant, operating under the name “The BBQ Guys”. This has nothing to do with the name “Well Done BBQs” which features in both of the disputed domain names;

·        Anyone visiting either of the two disputed domain names is automatically directed to Respondent’s website at thebbqguys.com;

·        Respondent has not been known by, or acquired any rights in, the name or mark “Well Done BBQs”;

·        Respondent is not making a fair use of either of the disputed domain names, but rather intends to gain commercially from them by misleadingly diverting consumers looking for Complainant’s services.

Complainant also alleges bad faith on the part of Respondent because, in his opinion, the latter has clearly registered the disputed domain names so as to prevent him from using either of them.

As noted above, Complainant was able to register the domain name <welldonebbq.com> when he was unable to register the name of his company in the .com domain name. However he was able to register <welldonebbqs.ca> as well as <welldonebbq.ca> in Canada.

Complainant further contends that Respondent has engaged in a similar pattern of abusive behavior, and there were annexed to the Complaint copies of the following domain names belonging to Respondent all of them corresponding to the names of existing businesses:

<grillsmithbbqcleanimg.com>                   Grill Smith BBQ
<collegeprobbqcleaning.com>                   College Pro
<studentprobbqcleaning.com>                   Student Pro

In addition, there were filed copies of the following two names which had been registered by Respondent both of which are variations on Complainant’s name: welldonebbqcleaning.com and welldonebbqs.com.

A letter to Respondent from Complainant’s legal counsel eventually elicited a response from an accountant who claimed to speak on their behalf, who was disrespectful of Complainant and his efforts to establish a business, and who was dismissive of Complainant’s alleged legal rights.

Complainant concludes by contending that Respondent has demonstrated egregious bad faith, and that they have embarked on an action of attempting to interfere with their current and potential competitors.

B. Respondent

Respondent filed a short Response of five paragraphs covering less than a whole page. It contained several spelling errors and throughout referred to Complainant as “Burner” instead of “Bruner”. It contained the following information, assertions or arguments –

·        They service and repair BBQs across Canada.

·        They have registered a number of generic domain names for future use all elating to barbecue cleaning or repair such as the disputed domain names, as well as <barbecueservice.ca>, <collegeprocleaning.com>, <collegeprobbqcleaning.com>, and <universitybbqcleaning.com>. This last being chosen because Respondent hires 12-24 university or college students through the Summer season.

·        They have also registered <thebbqguysservicenetwork.com> which they use for their nationwide promotional services

·        In their opinion, the disputed domain name <welldonebbqs.com> was just another generic name which they believe the public would identify with, and relate to, the cooking of well done food. It was bought in November 2010 which is five months after Complainant had opened his business and before Respondent became aware of Complainant.

·        Complainant registered his Canadian domain names in May 2010 and now, three years later, he apparently feels that he is entitled to a generic name.

·        Just because a letter or a word might be missing gives no one the right to say that it is rightfully his. There are, for example, others who have registered domain names that are similar to Respondent’s own name e.g. bbqguys.com and thebbqguy.com.
·        The time frame of a month, a year, or even three years “is not a way to say it’s mine.”

Thus in this case, the comparison is between WELLDONEBBQS and WELLDONEBBQCLEANING on the one hand and, on the other, the trademark in which Complainant claims to have rights, namely WELL DONE BBQS.

The first of the disputed names <welldonebbqs.com> is identical to this mark.

The second name is <welldonebbqcleaning.com> and this contains Complainant’s claimed trademark less the final letter ‘S’ and plus the word ‘cleaning’ which accurately describes the business in which Complainant is engaged. It is well established through a host of Decisions under the Policy that if a domain name is merely the combination of a common word and a Complainant’s trademark, this is sufficient for a finding that it is confusingly similar to that trademark.

It is also well established that the Policy does not require a Complainant to have a registered trademark, just one in which he has prior rights.

So the first question to be resolved here is whether Complainant does indeed have such rights in the name “Well Done BBQs”. As proof thereof, Complainant filed the following documents –

·        A copy of a Business Plan which he submitted to the Government of Ontario in May 2010. This refers to his proposed new start-up business under the name “Well Done BBQs”.

·        A copy of a Bank Statement for Well Done BBQs. This is dated May 1-31, 2010 and shows a closing balance of $1001.32.

·        Copies of a flyer and a business card both prominently displaying the name WELL DONE BBQs which, Complainant claims, were widely distributed in the Summer of 2010 in several Toronto neighbourhoods. However neither is dated.

·        A letter, dated June 21, 2013 from a professor J D Katz who relates how, in the Summer of 2010, he saw a lawn sign advertising Well Done BBQs, how he used the company’s services to have his own barbeque cleaned, and how he was so impressed that he recommended the firm to several other potential customers.

In the Panel’s view this is sufficient for it to decide that Complainant does indeed have rights in the name WELL DONE BBQs.
These rights date from at least May 2010, which is prior to the registration of the two disputed domain names on November 17, 2010. Since one of the disputed domain names is identical to Complainant’s name while the other is confusingly similar, the Panel finds that paragraph 4(a)(i) of the Policy  has been successfully proved in both cases.

Rights or Legitimate Interests

Respondent is in the same business as Complainant, namely the cleaning and servicing of barbeques, they both operate in the same town (Toronto), and they are both therefore competitors.

Possibly seeing, in Complainant, a rival and realizing that Complainant had failed to register his name as a “.com” domain name, Respondent decided to register two domain names that incorporated that rival’s name and then, adding insult to injury, they ensured that anyone accessing either name would be directed to their own website.

In the opinion of the Panel, Respondent’s reasoning for his adoption of the names – that they simply referred to the cooking of food that is well cooked – is specious, and their reference to other domain names that, if they had not omitted letters or words, would have been identical to the names of existing companies, is hardly persuasive.

It was said, for example, in Victoria’s Secret v. Zuccarini, FA 95762 (NAF November 18, 2000) that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks.

In addition, Complainant has also drawn attention to the apparent fact that Respondent has done the same to other businesses, and there were filed with the Complaint details of the registration of several domain names al of them belonging to Respondent and all of them, according to Complainant, incorporating the names of other companies or organisations.

In these circumstances, the Panel finds that Respondent has no rights or legitimate interest in either of the disputed domain names and thus paragraph 4(a)(ii) is also proved.

Registration and Use in Bad Faith

It was said, for example, in Microsoft Corporation v. Microsof.com aka Tarek Ahmed, D2000-0548 that “By using a domain name and establishing a website deliberately designed to confuse internet users and consumers regarding the identity of the seller of the goods and services, Respondent has not undertaken a bona fide or good faith offering of the goods and services. Also, in Red Bull GmbH v. Gutch D2000-0766 (WIPO September 21, 2000) it was found that the Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the Complainant and thus t was the equivalent of bad faith use. Also, in Classic Metall Roofs LLC v. Interlock Industries, Limited FA724554 (NAF August 1, 2006) it was found that Respondent had registered and used the domain name >clasicmetal roofing.com> in bad faith by redirecting internet users to his own competing website.

In the light of the evidence and arguments of Complainant as well as the above precedents, the Panel has no hesitation in finding that both of the disputed domain names were registered in bad faith and that paragraph 4(a)(iii) is therefore proved.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <welldonebbqs.com> and <welldonebbqcleaning.com> domain names be TRANSFERRED from Respondent to Complainantt.””

As for the decision I think its pretty horrible.  Any typo’s in the decision is that of the panelist.

The Complainant started a “business”, it didn’t do much of any revenue, he didn’t file a trademark and he failed to register the domains when he started in May.

This UDRP panel relied on the $11,000 in receipts of the business, the 61 customers, the $1,000 in the bank account and handing out some flyers to award the domain name that was owned by a competitive business to the Complainant.

It seems the student started the business in May but not think about registering domain names until December 30th.

We give the student an F in brand awareness and brand protection.

The panel cited several cases including that of alleged serial cyber-squatter John Zuccarini involving  a typo of Victoria’s Secret and a case involving a typo of Microsoft Corporation which was Microsof.com.

I hate to tell the panelist but a BBQ business doing a $11,000 a year is not Victoria’s Secret and is not Microsoft and to cite those cases to support this situation is misguided.

Moreover this domain name unlike the Zuccarini & Victoria’s Secret case was not parked but was in use by a company in the same business as the Complainant.

The panelist seemed to give a lot of weight to the domain holders summary dismissal of the Complainant claim but that seems to me to have been the proper response when someone without a trademark or much of a business writes to you trying to take away your domain, your property with such a weak argument.

I also don’t think any panel should be making there decision based on “Possibly seeing”:

“Possibly seeing, in Complainant, a rival and realizing that Complainant had failed to register his name as a “.com” domain name, Respondent decided to register two domain names that incorporated that rival’s name and then, adding insult to injury, they ensured that anyone accessing either name would be directed to their own website”

100% conjuncture

Panelist David H Tatham you get an F grade from us as well.