Roto-Rooter Corporation just lost its bid to grain control of the domain name RooterRooter.com by a 2-1 vote of a three member UDRP panel.

Panelists Richard Hill and David P. Miranda, Esq voted in favor of the domain holder while G. Gervaise Davis, Esq. would have transferred the domain name to the trademark holder.

A majority of the Panel found that the term of the the rooterrooter.com domain name is common and generic/descriptive, and therefore the Complainant does not have an exclusive monopoly on the term on the Internet.

Here are the highlights

Complainant Roto-Rooter Corporation owns and uses the ROTO-ROOTER mark in connection with plumbing and drain cleaning services, Registered November 2, 1954)

Complainant argues that Respondent’s rooterrooter.com domain name is confusingly similar to the ROTO-ROOTER mark as the “ROOT” portion of the domain is similar in appearance and sound to the “ROTO-” portion of the mark.

Additionally, the repetition of the term “ROOTER”, which results in a mark that begins with the letters “RO”, and includes in the first term the four letters “ROOT” (which is argued to be nearly visually identical to “ROTO”), and ends in the term “ROOTER” arguably results in confusing similarity.

Respondent explains that many of the marks that incorporate the term “rooter” disclaimed that term as being distinctive, while other marks did not so disclaim because it was understood that the term is generic. It says: “In sum, the above evidence clearly demonstrates the term ‘rooter’ is generic for plumbing services and that no one can claim any level of rights to the term in the plumbing industry. Consumers clearly understand that the term ‘rooter’ has no trademark significance and instead merely designates and classification of services, and is perceived by the public just the terms ‘plumber,’ ‘roofer,’ ‘mower,’ or ‘painter’ are perceived by the public.”

As noted above, Complainant does not contest this. Complainant accepts that a “rooting” is a generic term. What Complainant argues is that the first “rooting” in the disputed domain name is typographically similar to “roto”, and that that is what makes the disputed domain name confusingly similar to Complainant’s mark in the sense of the Policy.

One member of the majority does not agree with this argument.

The string “rooting” is not sufficiently close to the string “roto” to engender confusing similarity in the sense of the Policy.

Therefore the Panel finds, by a majority, that the disputed domain name is confusingly similar, in the sense of the Policy, to Complainant’s trademark.

Respondent argues it has been in business under the Rooter Rooter, LLC name for 2.5 years without any actual confusion and therefore is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

Further, Respondent contends that it provides legitimate plumbing services which constitute a bona fide offering of services through Rooter Rooter, LLC.

Respondent argues that its website does not: use the term “ROTO” on any webpage or in any context, incorporate any of Complainant’s design elements, or suggest any affiliation with Complainant.

A majority of the Panel finds that Respondent has provided satisfactory evidence to substantiate its rights and legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).

A majority of the Panel also finds that the term of the domain name is common and generic/descriptive, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. Respondent has therefore established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).

Consequently, a majority of the Panel finds that the Respondent has rights or legitimate interests in the disputed domain name.

Registration and Use in Bad Faith

Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

Respondent has rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), thus, Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).

Further, a majority of the Panel finds that Respondent has not acted in bad faith. Respondent contends that it has: used a duplicated generic term in its domain name, no history or pattern of bad faith domain name registrations, not been proven to have disrupted Complainant’s business, and not attempted to profit from Internet users’ confusion. Rather, Respondent claims it has operated its business Rooter Rooter, LLC in its jurisdiction while utilizing the domain name in good faith, which bears the name of its legitimate business. See Schering Aktiengesellschaft v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that because “Respondent neither offered the Domain Name for sale, nor wanted it to disrupt Complainant’s business, [nor] prevent Complainant from reflecting the mark in its domain,” it did not register or use the domain name in bad faith).

A majority of the Panel agrees with Respondent’s contentions that the domain name is comprised entirely of a common term that has many meanings apart from use in Complainant’s ROTO-ROOTER mark. Registration and use of domain name comprising such a common term is not necessarily done in bad faith. A respondent is free to register a domain name consisting of common terms and the domain name currently in dispute contains such a common term.

Consequently, a majority of the Panel finds that Respondent did not register and use the disputed domain name in bad faith in the sense of the Policy.

DISSENT

With the utmost respect to my fellow panelists, I must dissent to their expressed conclusion that it has not been established by Complainant that Respondent registered and is using the domain name in question for the purpose of confusing the general public into thinking this is a website for Roto-Rooter plumbing services.

There is simply no other rational conclusion when one looks at the actual facts here. The name is in fact very confusing, which is why it is being used. The fact that Roto-Rooter is a long standing trademark makes it even clearer.

Roto-Rooter is so well established in the plumbing and sewer line clean out business all over the US and in other locations that virtually any viewer of this offending domain instantly identifies it with the Roto-Rooter business activity. It is not just some guy who thought it would be fun to emphasize the word Rooter by using it twice in a row because he cleans out sewer lines clogged by roots. It is the equivalent of an electrical company using the domain name of GeneralGeneralElectric.com, hoping it would confuse the public into thinking this was just another website for General Electric which has been known world-wide for nearly a hundred years.

Now, if Respondent had argued that it was registered because he was a sports fan who “rooted” for various sports teams, and thought RooterRooter.com was a cute way of saying so, one might agree that at least this made some sense.

Nor does the mere fact that Respondent got away with this for several years, before being asked to give it up as cybersquatting activity, make this activity lawful nor can it be supported under the UDRP rules.

Even if we were to agree that there is no specific proof of bad faith adoption of the domain shown here, like a demand to be bought out for some large sum, there is simply no other reason for using it. Respondent’s argument that there are other repetitive word domain names does not establish that his use as a small plumbing business is innocent and not actionable.

However, since the majority has done such an excellent job of arguments and citations, I will not burden the reader with further comment, except to state that this Panelist would have ruled in favor of Complainant and ordered the cancellation or transfer of the domain, for the foregoing reasons.

G. Gervaise Davis, Esq