The Complainant is PET360, Inc. of Plymouth Meeting, Pennsylvania, United States of America, represented by Reger Rizzo & Darnall LLP, United States of America.
The Respondent is Kwan Lee of Tokyo, Japan and Whois Privacy Services Pty Ltd of Brisbane, Australia. 2. The Domain Name And Registrar
The disputed domain name is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2012. On May 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2012, the Registrar 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 May 22, 2012 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 May 22, 2012.
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 May 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2012.
The Center appointed Adam Samuel as the sole panelist in this matter on June 22, 2012. 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.
Service of the Complaint and other documents on the Respondent was unsuccessful because the address given by the Respondent to the Registrar was defective. 4. Factual Background
The Complainant sells pet-food online mainly within the United States of America (“US”). It is the legal owner of US trademark registrations for PETFOOD DIRECT, PETFOODDIRECT.COM and PETFOODDIRECT. The relevant registration numbers are 2445325, 2445327 and 3246593 respectively. The first two were registered on April 17, 2001 with the third registered on May 29, 2007. The disputed domain name was registered on January 1, 2004. The Complainant registered on August 18, 1996. 5. Parties’ Contentions A. Complainant
This section sets out the Complainant’s contentions with which the Panel may or may not agree.
The disputed domain name is confusingly similar to the Complainant’s trademarks. The Respondent is attempting to use the goodwill generated by the Complainant’s trademarks through the use of a confusingly similar domain name and by advertising the sale in commerce of identical products sold by the Complainant/ The Respondent’s extremely similar domain name is being mistaken for the Complainant’s Trademarks to the Complainant’s detriment.
The Respondent was likely to have been aware of the Complainant’s business when the disputed domain name was registered as the Complainant’s business is well known. The Respondent failed to respond to a cease and desist letter dated October 13, 2011.
The Complainant has never authorized the Respondent to use any of its trademarks. The Respondent is unknown in the US or anywhere else and has no reputation as to the quality of petfood products.
The Respondent provides “click through” services to its affiliates and is compensated for its services based on the number of clicks received from the disputed domain name’s website.
The use of a privacy service when combined with direct infringement of another person’s trademarks for profit constitutes evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion And Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name is the same as the Complainant’s trademarks with the omission of the letter ‘d’ and, in the case of two of the Complainant’s trademarks, the addition of the standard generic top-level domain name (gTLD) suffix “.com”. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0““) says:
“The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name… Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name…
A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.”
The disputed domain name consists essentially of two or three connected words indicating the sale through distance means of pet-food. It is virtually identical to the Complainant’s PETFOODDIRECT and PETFOODDIRECT.COM trademarks, except that it omits one “d”. It is in any event confusingly similar to the Complainant’s trademarks.
For these reasons, the Panel concludes that the Complainant has satisfied the first test in the Policy. B. Rights or Legitimate Interests
The Respondent is not called “petfoodirect” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. The Respondent has never asserted any rights or legitimate interests in that name. For these reasons, and in the absence of any response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
This part of the case is extremely finely balanced. The disputed domain name was registered eight years after the registration of the Complainant’s domain name and two and a half years after the registration of two of the Complainant’s trademarks. The Complainant’s cease and desist letter was sent seven years after the disputed domain name was registered. The disputed domain name involves a marginal misspelling of the phrase “pet food direct” (which also comprises the Complainant’s trademark) but a relatively common one when one considers the natural tendency in English to elide two of the same consonants where they do not combine to create a different sound. The cease and desist letter and the Complaint were almost certainly never received by the Respondent as a result of his own fault in not providing the Registrar with accurate information in this area, in breach of the Privacy Services’ agreement with him. The website to which the disputed domain name resolves appears to be a parking page put in place by the Registrar. The original version attached to the Complaint was in German a language which the Complainant’s customers are unlikely to use in any great numbers although it did provide links to sites which could supply pet-food online. Currently, the website contains an anodyne parking page which does not actively promote anything very much.
The first question concerns the length of time that the Complainant has taken to bring this Complaint, essentially eight years. The WIPO Panel Overview 2.0 says of this subject:
“Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.
However: Panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith. A small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the UDRP where the facts so warrant.”
This Panel supports the majority view that delay should not bar a complaint but that it should be borne in mind when considering the other element in this case, notably the question of bad faith.
The Complainant’s argument that the Respondent must have registered the disputed domain name, knowing of the Complainant’s trademarks suffers from the highly descriptive nature of those trademarks. While the Complainant may be known in the US, the same is not true of the Respondent’s home country. The time-lapse between the registration of the Complainant’s very similar domain name and trademarks and the registration of the disputed domain name does not point to any connection between the Respondent’s registration of the disputed domain name and the Complainant or its business.
Although the Respondent should claim no credit for this, it is apparent that the cease and desist letter will never have been seen by it and should, therefore, be discounted.
The central issue for the Panel in this case is whether the Complainant has proved that the Respondent must have known of the Complainant’s trademark rights when he registered the disputed domain name. The websites to which the dispute domain name resolves contain no evidence of any such knowledge. If the Complainant’s trademarks had not consisted of ordinary generic words, one could have deduced the Respondent’s knowledge from this but that is not the case here.
The Complainant can derive some modest support from what looks like a typo-squatting situation here. Again, though, the Panel does not find the omission of the second ‘d’ by the registrant in the disputed domain name to be itself evidence of the registrant targeting the Complainant’s trademark or anyone else. The registration of the disputed domain name by the registrant could also conceivably be explained on pronunciation grounds or carelessness, especially where the descriptive phrase at issue (“pet food direct”) and relied upon trademarks of the Complainant (PET FOOD DIRECT) seem to comprise such ordinary-meaning terms denoting online selling of pet-food.
The Complainant’s registered trademarks are not especially distinctive for purposes of the sale of pet food on the Internet, and the evidence of any fame they may enjoy outside of the Complainant’s jurisdiction is on this record limited. Nor does the Complainant appear to claim such fame outside of the jurisdiction in which it principally does business. In these circumstances, on the present record, the Panel is not persuaded on balance that it is more likely than not that the registrant was and is targeting the Complainant’s trademarks in particular, and not some other phrase or type of business.
The Complainant did not raise an argument about the Respondent being a known cyber squatter. The Panel’s own researches do, however, show one 2012 WIPO (Intel Corporation v. Whois Privacy Services Pty Ltd / Kwan Lee,WIPO Case No. D2012-0766) and one 2010 National Arbitration Forum case (SnagAJ, Inc. v. Kwan Lee, NAF Claim Number: FA1008001343636). Both involved quite distinctive trademarks which consisted essentially of made-up names. The Intel case also related to a domain name registered in 1995. Two cases do not prove that the Respondent is a serial cyber squatter, particularly when the decisions in question involve names of such a different type (INTEL and SNAGAJOB).
The Panel is well aware of the risk here that the Respondent may well know all about the Complainant and indeed wish to trade off its goodwill. One can say that the Respondent has apparently not sought to offer the domain name for sale, indeed has made this almost impossible in practice by making contact so difficult.
Ultimately, the Complainant has the burden of proving bad faith use and registration in this case. It seems at least plausible that the Respondent originally registered the disputed domain name hoping that it would be of interest to anyone keen to sell pet-food directly over the Internet. However, such individuals could well not hold trademark rights in that specific name. The Complainant’s own evidence indicates that its trademark even now is not widely known outside the US. In 2004, this is likely to be even less the case.
After careful consideration and weighing all of the relevant circumstances, the Panel concludes that Complainant has not on balance provided sufficient evidence of record in these proceedings to discharge its burden under the third element of the Policy. In particular, the Panel does not find the Complainant has shown it to be more likely than not that in registering and using the disputed domain name, the registrant was targeting the Complainant’s mark or anyone else’s. Naturally, however, this administrative decision in no way curtails other options which the Complainant may wish to contemplate as regards the registrant through the courts. 7. Decision
For the foregoing reasons, the Complaint is denied.
Adam Samuel
Sole Panelist
Dated: July 3, 2012
Full & Egal Universal Law Academy