The Complainant is Buddy Treats LLC of Ballwin, Missouri, United States of America, represented by SpiffWorks LLC, United States of America.
The Respondent is Skylabs Corporation, David Morton of Woodbury, New York, United States of America, represented by Michael Goldman, United States of America. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2010. On October 14, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the Domain Name. On October 14, 2010, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 October 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2010. The Response was filed with the Center on November 9, 2010.
The Center appointed W. Scott Blacker as the sole panelist in this matter on November 15, 2010. 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 a Missouri limited liability company for which a Ms. Sheryl Rhodes is listed as the contact person in this proceeding. The Complaint does not describe the Complainant’s business but attaches product labeling for “Sheryl’s SHAREABLES”, bite-sized meat products that can be consumed by both dogs and their owners (“One for you and one for the dog you love”). It does not appear that the Complainant operates a website, but the Complainant’s business is mentioned on the LinkedIn social networking page of Ms. Rhodes, who identifies herself as the owner of the Complainant limited liability company. This page explains that the Complainant’s product will be “a human grade dog treat that is under development at this time.” According to this page, the Complainant plans to start selling the product in “early 2011” via “Ebay, A, and website, and later in pet specialty retailers.”
The Complainant has a pending United States trademark application for SHAREABLES as a standard character mark (Serial No. 77936275). The Complainant applied for registration of this mark on February 16, 2010, on the basis of intent to use the mark in commerce. The United States Patent and Trademark Office (USPTO) issued a Notice of Allowance for this mark dated October 5, 2010, which gave the Complainant six months to submit a statement of use or request an extension. A USPTO Notice of Allowance is a written notice sent to an applicant after the mark is published and the 30-day opposition period has expired, signifying that the mark could be registered after submission of an acceptable, sworn allegation of use that includes evidence that the mark has been properly used in commerce. (See 37 Code of Federal Regulations sec. 2.88.) It appears from the USPTO database that the Complainant has not yet filed a statement of use, and there is no evidence in the record of this proceeding that the Complainant has in fact commenced using the mark in commerce.
The Respondent asserts that it owns some 2000 domain names (an account summary from one registrar, attached to the Response, shows 1783 registered domains). According to the Response, many of these domain names are comprised of generic English words or phrases, or misspellings of those words or phrases. On occasion, the Respondent develops associated websites, as the Respondent’s principal Mr. Morton did with before selling the domain name to Expedia. Otherwise, the domain names are typically parked with an advertising portal that displays advertisements served by Yahoo!/Overture and generates pay-per-click (PPC) advertising revenues for the Respondent.
The Respondent registered the Domain Name on March 6, 2002 and has used it since to redirect to a PPC advertising portal. The portal links to third-party advertisers under such categories as “Finance”, “Travel”, “Health”, “Shopping”, and “Home”, the latter including a subcategory for “Pets”. 5. Parties’ Contentions A. Complainant
The Complainant points to the USPTO Notice of Allowance and copies of product packaging designs to claim an interest in a SHAREABLES mark that is identical to the Domain Name. The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Name and infers bad faith from the fact that the Domain Name has merely been parked for eight years with a PPC advertising portal and from a finding against the Respondent in an earlier UDRP proceeding (Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc. v. SkyLabs Corporation and DL Enterprises,WIPO Case No. D2004-0220). B. Respondent
The Respondent contests the Complainant’s asserted rights in a SHAREABLES mark.
The Respondent claims a legitimate and prior commercial interest in using the Domain Name for a PPC advertising portal and for possible future use in connection with a “social networking tool” currently under development.
Denying bad faith in registering and using the Domain Name, the Respondent observes that it registered the Domain Name eight years before the Complainant’s trademark application. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the 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.” A. Identical or Confusingly Similar
The preliminary question is whether the Complainant has established that it has rights in a SHAREABLES mark. Previous WIPO panels have found such rights for purposes of the first element of a UDRP complaint where the complainant did not have a registered mark but had received a USPTO Notice of Allowance in the process of applying for registration. However, these decisions concerned circumstances where the complainant either established, in the UDRP proceeding, that the mark had acquired a secondary meaning through its use sufficient to support common law rights in the unregistered mark (see, e.g., Mercury Radio Arts, Inc. and Glenn Beck v. Isaac Eiland-Hall,WIPO Case No. D2009-1182; Abraxis BioScience, LLC v. Les Rubin,WIPO Case No. D2008-0066), or the complainant at least made “uncontested allegations of use in conjunction with the USPTO’s issuance of the corresponding Notice of Allowance” (Elementage LLC v. Chris Hayes,WIPO Case No. D2008-0059).
Here, the Complainant’s claim to rights in a relevant mark is based solely on the USPTO Notice of Allowance and “[e]xisting product packaging” attached to the Complaint. There is no assertion that a product has actually appeared in the market with this packaging. Indeed, Ms. Rhodes’ LinkedIn profile suggests to the contrary that the product itself is still “under development” and will not be sold until “early 2011”.
In the absence of either trademark registration or proof of use, the Panel strongly doubts that the Complainant has established rights in a mark sufficient to establish standing to pursue a UDRP complaint. However, given the Panel’s conclusions on the third element of the Complaint, it is unnecessary to give further consideration to this first element of the Complaint. B. Rights or Legitimate Interests
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Name, including 4(c)(i):
“before any notice to you of the dispute, your 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”.
The Response suggests that the Respondent might have a legitimate interest in acting as a domain name broker and offering the Domain Name for sale for its generic value, or alternatively in developing a social networking tool to be used in connection with the Domain Name. The Respondent has not provided evidence of engaging in either business, however, or of making “demonstrable preparations” to use the Domain Name for such purposes.
Rather, it is undisputed that the Respondent has used the Domain Name to generate PPC advertising revenues. This could be considered a use in connection with the bona fide offering of goods and services under certain conditions, such as presenting advertising relevant to the generic rather than trademark value of the Domain Name. See, e.g., Philip Morris USA Inc. v. Prophet Partners Inc.,WIPO Case No. D2007-1614 (and cases cited therein). However, this possibility does not require further examination in this proceeding, given the Panel’s conclusions below on the third element of the Complaint. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy obliges the Complainant to establish that “the Domain Name has been registered and is being used in bad faith”. This provision expressly concerns the Respondent’s likely intentions at the time of registration as well as subsequently. In some circumstances, the Respondent’s intentions may be inferred from its later conduct. Thus, paragraph 4(b), which provides a non-exhaustive list of circumstances that indicate bad faith, includes the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
Bad faith may be inferred from the registration of a domain name corresponding to a trademark, and its subsequent use for a PPC advertising portal, where the evidence suggests that the domain name was selected for its trademark value rather than for its generic value. See Philip Morris USA Inc., supra. Such an inference is simply not possible, however, where the trademark did not exist at the time the domain name was registered and there is no evidence that the respondent had advance knowledge of the mark. See Dori Media International GmbH v. Sikreto LLC,WIPO Case No. D2007-1525 (and cases cited therein).
In the current proceeding, the Complainant has not established that it has registered or commenced using a SHAREABLES mark, much less that the Respondent must have been aware of the mark in choosing the Domain Name. In any event, the timing is all wrong for such an inference. The Complainant applied for registration of the mark on the basis of intent to use only in February 2010, eight years after the Domain Name was registered. The Complainant has not explained how the Respondent could have had the Complainant’s later-conceived mark in contemplation when the Respondent acquired the Domain Name in 2002. Thus, there is no plausible ground for concluding that the Domain Name was both registered and used in bad faith. The fact that the Respondent was found in another UDRP proceeding to have acted in bad faith cannot, in this proceeding, transform an impossibility into a presumption.
The Panel concludes that the Complainant has not established the third element of the Complaint. 7. Decision
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Dated: November 28, 2010
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