WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION PetMed Express, Inc. v. JLB a/k/a Joseph Brinton Case No. D2009-0179 1. The Parties
The Complainant is PetMed Express, Inc. of Pompano Beach, Florida, United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is JLB a/k/a Joseph Brinton of Fort Lauderdale, Florida, United States of America, represented by Traverse Legal, PLC, United States of America. 2. The Domain Names and Registrars
The disputed domain names , , and are registered with GoD, Inc. The disputed domain name is registered with UdomainN LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2009. On February 10, 2009, the Center transmitted by email to GoD, Inc. and UdomainN LLC a request for registrar verification in connection with the disputed domain names. On February 10, 2009, GoD, Inc. transmitted by email to the Center its verification response regarding , , and . On February 11, 2009, UdomainN LLC transmitted by email to the Center its verification response regarding . The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2009. The Response was filed with the Center on March 9, 2009.
On March 11, 2009, the Center received a supplemental filing from the Complainant. The Center acknowledged receipt of the same, and informed the parties that such document will be brought to the attention of the Panel (on appointment) for its consideration and discretion.1
The Center appointed William R. Towns as the sole panelist in this matter on March 23, 2009. 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 an online, telephone and mail order provider of pet medications and other health and nutritional supplements for dogs, cats and horses. The Complainant operates an online pet pharmacy at 1-800-PetMeds , and is owner of the following trademark registrations in the United States: PET MED EXPRESS, INC, 1888PETMEDS, 1-800-PETMEDS, PETMEDS, and 1-800-PETMEDS 100% PRODUCT GUARANTEE “BETTER THAN A MANUFACTURER'S GUARANTEE, IT'S 100% SATISFACTION”. Each of the “petmeds”-formative marks are registered on the United States Patent and Trademark Office's (USPTO) principal register pursuant to Section 2(f) of the Lanham Act.2 The Complainant's mark PET MED EXPRESS, INC. was registered by the USPTO on September 9, 1997. The USPTO issued registrations for 1888PETMEDS and 1-800-PETMEDS on October 15, 2002, and October 19, 2004, respectively, and for PETMEDS on August 29, 2006.
The Respondent registered the disputed domain name on July 24, 2006. This domain name directs Internet users to the Respondent's website (Pet Med Outlet), which offers for sale pet medicine at discount prices. The Respondent's website is a “shopping portal” with links to other websites operated by merchants such as and , from whose sales the Respondent as an affiliate realizes income. The Respondent also generates income from the Pet Med Outlet website through paid advertising links (“Ads by Google”), including links to the Complainant's website and to websites or other merchants that compete directly with the Complainant.
The Respondent registered the disputed domain name on September 15, 2006. The domain name does not currently resolve to an active website, but there is evidence in the record of its use with a website containing search links for pet medicines and other pet-related products or services.
The Complainant placed the Respondent on notice of this dispute on December 10, 2008, with respect to the disputed domain name . The Respondent replied to the Complainant's demand on January 7, 2009. In the intervening period, the Respondent registered the disputed domain names , , and . The and domain names resolve to pay-per-click parking websites (provided by GoD) featuring “sponsored listings” that include links to the Complainant's website and to the websites competing with the Complainant. The domain name resolves to a website described as providing information about where to obtain low priced pet medications. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain names are confusingly similar to its registered marks, which the Complainant refers to collectively as “the PET MEDS Trademark”. The Complainant maintains that the disputed domain names incorporate the two most prominent words in the Complainant's marks “pet” and “med” (or “meds”). The Complainant contends that the inclusion of generic or descriptive words such as “outlet”, “index” and “value” does not dispel the confusingly similarity of the disputed domain names with the Complainant's marks.
The Complainant denies that the Respondent has rights or legitimate interests in the disputed domain names. According to the Complainant, the Respondent has not been authorized to use any of the PET MEDS Trademarks. The Complainant maintains that the Respondent is not commonly known by the disputed domain names, and further contends that the Respondent has not used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. To the contrary, according to the Complainant, the Respondent is using the disputed domain names to trade on the goodwill developed in the Complainant's marks, providing links or information about various third-party services competitive with the Complainant's services, and to redirect Internet users to a website from which the Respondent receives affiliate commissions from the Complainant's competitors.
According to the Complainant, it has used the PET MEDS Trademark in commerce since as early as March 1999, and the PETMEDS EXPRESS mark since August 1996. The Complainant asserts that the Respondent has engaged in a bad faith pattern of registering domain names to prevent the Complainant from registering domain names corresponding to its marks, and that the Respondent has intentionally used the disputed domain names in bad faith to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's PET MED Trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. B. Respondent
The Respondent denies any bad faith in connection with the registration and use of the disputed domain names. According to the Respondent's sworn statement submitted with the Response, his sole business is operating discount pet medication offering services, and each of the disputed domain names was selected for its descriptive qualities as it relates to discount pet medication offering services.
The Respondent avers he had no knowledge of the Complainant having rights in any trademarks when he registered the disputed domain names. Further, according to the Respondent, based on the extensive third party use of the phrase “pet med” on the Internet, he does not believe anyone can claim exclusive rights therein. The Respondent further alleges, in any event, that he registered the disputed domain name a month before the Complainant obtained its United States registration of the PETMEDS mark.
The Respondent maintains he has established rights or legitimate interests in the disputed domain names, based on the use of the descriptive phrase “pet meds” for pet medicines. The Respondent asserts that the phrase “pet meds” is commonly used, and identifies domain names owned by others, including , , >, , and . The Respondent further maintains that the Complainant uses “pet meds” in a generic or descriptive sense on the Complainant's own website.
The Respondent indicates that he acquired the domain name with the Pet Med Outlet website in July 2006, for the purchase price of $17,000. The Respondent asserts and offers documentation indicating that he registered in September 2006 for purposes of search engine optimization efforts. Further, according to the Respondent, the and domain names were registered in order to create an indexed directory of pet medications. The Respondent denies making any commercial use of these domain names, and further denies earning any money from the parking of these domain names by GoD. Finally, the Respondent maintains that was registered to create a blog providing content about pets, pet medications, and pet medicine.
The Respondent also contends that the Complainant has engaged in reverse domain name hijacking, and requests a finding from the Panel to that effect. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name registered by the respondent 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to the Complainant's PET MED EXPRESS, INC, 1888PETMEDS, 1-800-PETMEDS, and PETMEDS marks. The Panel notes that the Complainant's marks are entitled to a presumption of validity under United States trademark law by virtue of their registration with the USPTO. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. See also Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson Sr.,WIPO Case No. D2000-1525. Thus, the Panel compares the mark and the domain name alone, independent of the use factors usually considered in a traditional trademark infringement action. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor,WIPO Case No. D2001-1367; InfoS, Inc. v. Delighters, Inc. d/b/a Cyber Joe's Internet Cafe,WIPO Case No. D2000-0068. Based on such a comparison, the Panel concludes that the disputed domain names are confusingly similar to the Complainant's marks.
The fact that the Complainant did not secure its registration of the PETMEDS mark until a month after the Respondent had registered the disputed domain name is not material for purposes of the first element of the Policy. Paragraph 4(a)(i) embodies no requirement that a complainant's trademark rights must have arisen before the disputed domain name was registered.3 The Policy refers to the complainant's ownership of trademark rights in the present tense, and it is the consensus view of WIPO Panelists that a complainant can have rights in a trademark or service mark corresponding to the disputed domain name even where those rights first arose after the registration of the domain name. See, e.g., Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc),WIPO Case No. D2003-0320; AB Svenska Spel v. Andrey Zacharov,WIPO Case No. D2003-0527; Iogen Corporation v. IOGEN,WIPO Case No. D2003-0544; Madrid 2012, S.A. v. Scott Martin-MadridMan Websites,WIPO Case No. D2003-0598.4
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden is shifted to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. It is uncontroverted that the Complainant has not authorized the Respondent to use the PET MED marks. The record reflects that the Respondent registered the disputed domain names, all of which are confusingly similar to the Complainant's registered marks. The Respondent is using one or more of the disputed domain names to generate income as an affiliate of several of the Complainant's direct competitors, as well as generating click through advertising revenues from links to the Complainant's website and those of its direct competitors placed on the Respondent's website. This is sufficient in the Panel's judgment to constitute a prima facie showing under paragraph 4(a)(ii). See, e.g., Document Technologies, Inc., supra; Compagnie de Saint Gobain v. Com-Union Corp.,WIPO Case No. D2000-0020.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed 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) 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.
The Respondent maintains that he registered the disputed domain names based on the appeal of the commonly used descriptive phrase “pet med”, and not because of any trademark value associated with that term, and asserts that he has the right to register and make a descriptive use of the disputed domain names. A number of panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is identical or confusingly similar to the registered mark of a complainant, provided it has not been registered with the complainant's trademark in mind. See, e.g., National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
Thus, where a respondent registers a domain name consisting of a “dictionary” term because the respondent has a good faith belief that the domain name's value derives from its generic or descriptive qualities rather than its specific trademark value, the use of the domain name consistent with such good faith belief may demonstrate a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304. See also Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964 (domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark).
In the Internet context, there is substantial indication of the descriptive use of the terms “pet meds” and “pet med” in relation to pet medications, veterinary medicine, and other related goods and services.5 On a number of websites, the term “pet meds” appears to be used interchangeably with “pet medicines” or “pet medication”. In point of fact, the Respondent is correct that evidence of such descriptive use can be found even on the Complainant's own website (“at 1800PetM, we don't just sell pet meds”; “1800PetMeds offers the highest quality petmeds at the best prices”). While the Complainant has obtained federal trademark registrations in the United States for PETMEDS and other composite marks incorporating the terms “pet med” or “pet meds”, these marks nonetheless are descriptive in relation to the Complainant's business and the identified goods or services.6
The Respondent, as noted above, maintains that he registered the disputed domain names because of the appeal of “pet med” as a descriptive phrase, and not because of any trademark value, and he insists that he is using each of the disputed domain names in a manner consistent therewith. While paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain names once the Complainant has made a prima facie showing, the ultimate burden of proof with respect to all three elements of paragraph 4(a) of the Policy remains with the Complainant. Because, as discussed below, the Panel concludes that the Complainant in the circumstances of this case has failed to meet its burden of proof respecting bad faith registration and use of the disputed domain names under paragraph 4(a)(iii) of the Policy, a determination whether the Respondent has established rights or legitimate interests in the disputed domain names is not necessary to the Panel's decision in this case. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. Nevertheless, it is paramount that panels decide cases based on the very limited scope of the Policy. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. The Policy provides a remedy only in cases where the complainant proves that the domain name “has been registered and is being used in bad faith”.
The Panel, after careful consideration of the totality of the circumstances reflected in the record before it, does not believe that the evidence on balance establishes the Respondent's bad faith. The Policy was not intended to permit a party who elects to register or use a common or descriptive term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See M, LP v. Bill Zag and NWLAWS.ORG, supra; National Trust for Historic Preservation v. Barry Preston, supra. In view of the descriptiveness of the terms “pet med” and “pet meds” when used in relation to pet medicines, as discussed more fully in under the preceding heading, the Panel is not in a position to conclude based on the available evidence that the Respondent more likely than not registered the disputed domain names with the clear aim of profiting from and exploiting the Complainant's trademark rights. See, e.g., National Trust for Historic Preservation v. Barry Preston, supra.
The Panel nonetheless considers it appropriate to comment regarding the Respondent's registration of the disputed domain names , , and , which were not made until after his receipt of the Complainant's cease and desist letter of December 10, 2008. The Respondent maintains that these domain names were registered based on their descriptive qualities for use with noncommercial websites providing information about pet medicines. At present, however, two of these domain names, and , resolve to pay-per-click parking sites. While there is no evidence in the record that the Respondent is sharing in advertising revenues generated from this site by GoD, such use of these domain names does not in this Panel's view constitute a noncommercial use for purposes of paragraph 4(c)(iii) of the Policy.7 Nor has the Respondent presented any evidence of demonstrable preparations regarding the noncommercial use for which these domain names ostensibly were registered.
The Respondent's registration of these additional domain names only after being placed on notice of this dispute by the Complainant is a factor from which an inference might be drawn that the Respondent registered these domain names with the Complainant's marks in mind. Such an inference, if drawn, arguably would militate against the Respondent's claim of rights or legitimate interests in these domain names, and possibly suggests bad faith. See C.S. Lewis (PTE.) Ltd. v. Richard Saville-Smith,WIPO Case No. D2008-0821 (respondent's registration of two additional domain names incorporating complainant's mark after filing of complaint); TSK Franchise Systems, Inc. and Daniel “Tiger” Schulmann v. “.” d/b/a Steve Godun ,WIPO Case No. D2007-0996 (respondent's subsequent registration of three confusingly similar domain names possibly “leverage for a more substantial eventual settlement regarding control” of earlier registered domain name).8
In the final analysis, however, the burden of proving bad faith under paragraph 4(a)(iii) of the Policy remains with the Complainant. The Complainant's marks are not arbitrary or fanciful in relation to the identified goods and services, and while the Complainant's marks presumptively are entitled to protection under United States trademark law based on their secondary meaning, the jurisdiction of this Panel under the Policy is limited to providing a remedy in cases of cybersquatting in the context of a summary proceeding. See Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. As noted earlier, the Policy was not intended to permit a party who elects to register or use a common or descriptive term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See M, LP v. Bill Zag and NWLAWS.ORG, supra. Although the decision is a close one, the Panel does not believe that the Complainant has made the requisite showing to invoke the limited jurisdiction of the Policy in this case.
Accordingly, and for the reasons previously stated, the Panel concludes that the Complainant has failed to satisfy its burden of showing bad faith registration and use of the disputed domain names under paragraph 4(a)(iii) of the Policy. E. Reverse Domain Name Hijacking
Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. To prevail on such a claim, a respondent must show that the complainant knew of the respondent's strong rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty. Limited.,WIPO Case No. D2000-1224; Goldline International, Inc. v. Gold Line,WIPO Case No. D2000-1151. In the Panel's judgment, the Respondent has not made such a showing. 7. Decision
For all the foregoing reasons, the Complaint is denied.
William R. Towns
Sole Panelist
Dated: April 6, 2009
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