The Complainant is Intervet Inc. of Kenilworth, New Jersey, United States of America, represented by Lowenstein Sandler PC, United States of America.
The Respondents are PrivacyP of Moergestel, Netherlands and Alex Do of the Commonwealth of Dominica. 2. The Domain Name and Registrar
The disputed domain name is registered with RegisterM Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2010. On November 9, 2010, the Center transmitted by email to RegisterM Corp. a request for registrar verification in connection with the disputed domain name. On November 23, 2010, RegisterM Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 6, 2010 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 December 6, 2010.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2010.
The Center appointed John Katz QC as the sole panelist in this matter on January 11, 2011. 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.
On January 20, 2011 the Panel issued a Panel Order raising some queries regarding the evidence and the ownership of the registered trade marks and the association between various legal entities recorded as proprietors. On January 20, 2011 by Panel Order the Panel gave the Complainant to January 27, 2011 to put in evidence covering the issues raised and for the Respondent to reply within a further seven days from the date of any supplementary evidence from the Complainant. The Panel extended the due date for his decision to February 7, 2011. On January 27, 2011 the Complainant lodged with the Center its further evidence and submission. The Respondent has not responded to this further submission. 4. Factual Background
The Complainant in this domain name dispute is the parent entity which through various subsidiaries and affiliates and through various acquisitions and mergers has acquired and is therefore the owner of various intellectual property rights in trade marks under which goods and services are advertised and sold. These are, broadly, an identification system using a microchip encoded with identity information, a computer database and apparatus for inserting the microchip subcutaneously, to enable pets and other animals to be traced or tracked and their medical details recorded.
This system is marketed under and by reference to the trade mark HOMEAGAIN in various forms and in word and device registrations. At least one of the federal trade mark registrations in the United States dates back to 1994. Examples of the registrations at the USPTO are in evidence as also is a table of 7 registrations or pending applications in Australia, Canada, Japan, New Zealand, Norway, South Africa and Switzerland.
The Complainant achieved a turnover of between USD 25 million and USD 50 million in sales of HOMEAGAIN product in the United States in 2009. It’s spend on marketing and promotion was over USD 5 million in the United States in 2008 – 2009.
The Complainant refers to its products generally as the HOMEAGAINID products.
The Complainant also has a website about its HOMEAGAIN products “” which is also in evidence. 5. Parties’ Contentions A. Complainant
The Complainant contends it polices its rights to the HOMEAGAINID products and trade marks. It says the mark(s) are strong with considerable goodwill. As a result of use and consumer recognition the HOMEAGAIN mark(s) are well known within the animal health industry. In its further submission the Complainant says its marketing activities comprise television, print and trade media, shows, sponsorship and point of sale materials. The precise figures are not given on grounds of confidentiality. In the Panel’s view, the lack of such evidence is unsatisfactory and Complainant should have put in evidence regarding the strength of the Complainant’s mark (e.g., expenditure even if on the basis of, for example, “no less than USD X million dollars”) especially vis-à-vis an analysis under the third element of the Policy.
Beyond an assertion of the Respondent being on constructive notice, further evidence of the Respondent being on actual notice of the Complainant’s mark in March 2001, being the date when the disputed domain name was registered, is wanting. B. Respondent
Because the Respondent has defaulted it has not put before the Panel any evidence. Nevertheless, the Respondent does maintain a website link to the disputed domain name and some indication of its activities can be gleaned from that website. Inferences can also be drawn with respect to its website and disputed domain name.
It is also noted that the first named Respondent PrivacyP advertises and promotes itself as being a service provider offering privacy protection to owners of domain names so that all publicly visible contact details of the true owner of the domain name are shielded. No inferences necessarily adverse to the Respondent are drawn in this case from the utilization of a privacy protection facility such as this as PrivacyP fulfils the function of ensuring privacy for a variety of reasons, which may be legitimate in appropriate cases. These can include non-abusive reasons such as providing protection from telemarketers and spammers and also the less desirable and in some cases abusive practice of shielding the true identity of cyber-squatters.
It is also apparent from the Panel’s own research that the second named Respondent has previously featured in a WIPO UDRP decision namely Johnson & Johnson and McNeil Ppc Inc v. Registrant 3165489 and Alex Do,WIPO Case No. D2010-1563. In that decision the panel determined that the disputed domain name had been registered by the respondent without any claim to rights or legitimate interests and had been registered and used in bad faith. The disputed domain name there was in relation to a product recall website established by the complainant in respect of one of its products.
The website of the Respondent in this case is clearly a portal website or landing page used to link to other websites for pet and pet related products and services. These include microchip identification services, presumably of a type similar to those offered by the Complainant. It appears these other sites feature advertisements (for which no doubt revenue on a pay per click basis is derived). It would appear the Respondent does not itself offer directly any pet identification products or services but merely captures on its website a number of pet identification products and services of third parties.
The Respondent’s trading activities would therefore seem to be restricted to revenue derived by pay per click or pay per view traffic. Nevertheless, websites such as these which in effect provide results like search engines might with links to other websites are not of themselves and without more objectionable. They can, and do, become objectionable under the Policy when a domain name confusingly similar to a complainant’s trade mark is being utilized to host a website simply to divert traffic and capitalize on the goodwill generated by a complainant’s trade mark. 6. Discussion and Findings
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The respondent is given full opportunity to respond. In this instance, the Respondent has defaulted. But it nevertheless remains for the Complainant to make out its case.
Paragraph 4(a) of the Policy sets out three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abuse of its domain name registration and to obtain relief. These elements are that:
(i) The respondent’s domain name is identical or confusingly similar to a trade mark 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 respondent’s domain name has been registered and is being used in bad faith.
Each of the three elements must be established by a complainant to warrant relief. A. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.
The Complainant must establish that it has such rights either to common law or registered trade marks or service marks and that those marks are confusingly similar to the respondent’s disputed domain name.
The Complainant has a number of registered trade marks in a number of jurisdictions both for the word mark and the word mark coupled with a device or logo. A perusal of its own website also shows the extent of its activities and use of its marks.
The Complainant also can be regarded as having unregistered trade marks in that the Complainant is entitled to the benefit of any reputation and concomitant goodwill that flows from its use in commerce of the trade mark (corresponding also to the trading name) and get up featuring or incorporating any part of the HOMEAGAIN mark or sign. That may enable it to enforce such rights to a common law trade mark by for example a case of passing off or trade diversion or dilution of goodwill.
The fundamental feature of the Complainant’s trade marks is “homeagain” in whatever form, and whether as one word or two and whether with a device or other symbol associated with or attached to it. The purpose of the system which the trade mark promotes and therefore protects is a pet identification system. Thus, any person wanting to know or understand anything about a pet identification system known as HOMEAGAIN would likely associate “homeagainid” with the Complainant. Further, the addition of the suffix “id” is purely descriptive and universally accepted as the diminutive form of identity, identifier or identification. In that same vein, the use of the gTLD suffix “.com” in the disputed domain name is similarly not sufficient to preclude a finding of confusing similarity under the Policy. It therefore serves little to distinguish and set apart the disputed domain name from HOMEAGAIN.
To the extent the word or phrase “homeagain” could be regarded by some as slightly descriptive, that bears little relevance in this case under a first element analysis (where trademark rights have indeed been established therein and the trademark is fully incorporated in the disputed domain name).
The question for determination is whether or not the disputed domain name is identical or confusingly similar to trade marks in which the Complainant has rights.
The Panel notes in passing, there is a considerable body of case law in relation to what constitutes the same or identical mark in trade mark jurisprudence.
In the European Court decision of LTJ Diffusion SA v Sardas Vertdaubet SR [2003] FSR 34 the Court considered what constituted use of an identical mark. It held that a mark used by a Respondent is identical with a Complainant’s mark if the former “reproduced without any modification or addition all the elements constituting the trade mark or, where, viewed as a whole, it contains differences so insignificant that they go unnoticed by an average consumer”.
The Panel considers this statement helpful when applying the test of the first element1 to the facts of the present Complaint. If one looks at the disputed domain name from the viewpoint of whether or not when viewed as a whole it contains differences so insignificant that they go unnoticed by the average consumer, it must follow that the disputed domain name incorporates the identical mark to that for which the Complainant has protection in each case.
However, even if that was not so there can be little quarrel with the argument that the disputed domain name is confusingly similar. This must especially be so where the differences are of such a minor nature that to most people they would go unnoticed or at best would simply, if noticed, be dismissed as inconsequential.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out. B. Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to any of the trade marks in suit thereby justifying a proprietory right to the mark.
Under paragraph 4(a)(ii) a Respondent can justify its registration of the disputed domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no rights or legitimate interests and can claim none.
The Complainant has stated that it has not licensed or authorized the use of its marks by the Respondent.
There is no evidence of any rights or legitimate interest that the Respondent may have.
As the Respondent appears to use its website accessed via the disputed domain name as a portal, bypass or pass through vehicle to other third party websites it might have been able to claim a right or legitimate interest if it genuinely offers a pet identification service or library website enabling viewers to garner information on third party pet identification products generally available and to which third party websites inquirers can then be transported via a link, and that it does so without using or relying on any goodwill of the complainant.
In this instance it appears as if all the linked websites are pet related although embracing the vastly greater catchment of pet insurance, pet grooming, pet fencing and so.
It is often difficult to make a finding of no rights or legitimate interests where the products or services of the website linked to the disputed domain name are all related to the description of the disputed domain name. However, as the disputed domain name was registered in 2001, almost six years after the Complainant’s first trade mark registration, and as the Respondent has not put before the Panel any response and claim to rights or legitimate interests, the inference may be drawn that the original registration in 2001 was opportunistic and used perhaps initially as a parking page or later as a pass through to generate pay per click views and revenue.
It is also inherently unlikely that the Respondent was not aware of the Complainant’s reputation. It is not as if the Respondent has used the name “petid” or similar but rather the identical prefix “homeagain” as used by the Complainant. That fact coupled with the fact that it relates to pet identification services enables the inference to be drawn that the Respondent does indeed have no rights or legitimate interests.
It is perhaps surprising that the Complainant has not taken any action against the Respondent for almost 10 years. That is a troubling feature of this Complaint but the Panel assumes that the Complainant was not previously aware of the disputed domain name until sometime before the making of the Complaint. It would have been helpful if the Complainant had addressed this issue. Although in any case, the Panel notes that laches have not been typically considered a defense under the Policy. See, The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC,WIPO Case No. D2009-0057.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out. C. Registered and Used in Bad Faith
As to the third ground, this requires that the name be registered and used in bad faith. As has previously been said in other panelists' decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
Any person who came across the Respondent’s disputed domain names would immediately assume that it was a domain name owned and operated by the Complainant, contrary to the fact.
To an extent the issues and concerns over the Section B issues elide with those under this Section C. The Complainant cites from I v. Terebaum Ofer,WIPO Case No. D2000-0075 that bad faith is found when “it appears more likely than not from the evidence offered by the Complainant that Respondent has registered the domain name in a deliberate attempt to attract users to its planned website for commercial gain due to confusion with the Complainant’s mark.”
That is of course so and it is important to note that there the Panel referred to “the evidence” from the Complainant. Further, the requirements under Section C addressing paragraph 4(a)(iii) of the Policy are two-fold, namely both registration and use in bad faith. For this Panel, the question of bad faith registration is to be judged as at the date of original registration, in this case March 2001. The Complainant does not suggest or contend that subsequent renewals have resulted in bad faith and the preponderance of current authority in WIPO decisions is that renewals do not constitute for the purposes of the Policy new registrations. See, Teradyne, Inc. v. 4Tel Technology,WIPO Case No. D2000-0026.
This Panel does not quarrel with the general principle that pay per click websites that essentially divert traffic to capitalize on established goodwill are generally regarded as being in bad faith. But the Panel reminds himself that the position must be judged as at March 2001. The evidence of the Complainant that has been put in is of its recent activities, its 2008 – 2009 revenue, ad and marketing spend and its recent trade mark registrations and applications. There is only one trade mark registration that predates the disputed domain name and the assumed activities of the Respondent. While making an assertion that the Respondent was on constructive notice of the Complainant’s trademark, the Complainant has not helped its case by providing further evidence that in March 2001 the Respondent was on actual notice. The Panel must therefore balance the evidence it has before it, including the composition and use of the disputed domain name, to ascertain the likely events and circumstances surrounding the registration of the disputed domain name.
It is in this light that the Panel issued the earlier Panel Order to enable the Complainant (and Respondent, if willing) to elaborate upon aspects of its evidence and submissions that were partly in evidence but unclear. That Panel Order did not address the question of the registration and use of the disputed domain name as at March 2001 as this was not specifically evidenced in the Complaint2.
As earlier indicated, issues under Sections B and C elide and findings under Section B can be used to support findings under Section C. It is fairly clear that the Respondent has set up its website as a landing page some five or six years after the Complainant’s first trade mark registration which was open for opposition as from December 1995 and was registered in November 1996 (but effective as from December 1994).
The click per view system is designed to enable the owner of the landing page website to generate revenue each time a viewer visits one of the listed third party products or services. Such websites do not of themselves violate ICANN Policy per se – see Bootie Brewing Co v. Deanna Ward,WIPO Case No. D2003-0185; mVisible Technologies Inc v. Navigation Catalyst Systems Inc,WIPO Case No. D2007-1141.
All these concerns were well articulated and discussed by the panel in Asian World of Martial Arts Inc v. Texas International Property Associates,WIPO Case No. D2007-1415.
In considering the issues under this Section the Panel has taken into account the earlier decision of another panelist involving the same second named Respondent, namely Johnson & Johnson and McNeil Ppc Inc v. Registrant 3165489 and Alex Do,WIPO Case No. D2010-1563 already referred to above. Having regard also to the absence of any Response at all from the second named Respondent and the fact that it is inherently unlikely that the choice of the disputed domain name was fortuitous, the Panel finds, but after consideration of the finely balanced evidence, that the second named Respondent has registered and is using the disputed domain name in bad faith.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is made out. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
R J Katz QC
Sole Panelist
Dated: February 7, 2011
1 As illustrated by previous UDRP cases, the “question under paragraph 4(a)(i) of the Policy is simply whether the alphanumeric string comprising the disputed domain name is identical to the Complainant's mark or sufficiently approximates it, visually or phonetically, so that the disputed domain name on its face is ‘confusingly similar’ to the Complainant's mark.” Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited,WIPO Case No. D2010-0776.
2 The preponderance of authority from other Panelists is that a Complainant does not get a second chance – see for example Furrytails Limited v. Andrew Mitchell,WIPO Case No. D2001-0857; TABCORP Holdings Ltd v. Steven Hertzberg,WIPO Case No. D2001-1052.
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