Complainant is Jeffers, Inc. of Dothan, Alabama, United States of America, represented by Edwards Wildman Palmer LLP, United States of America.
Respondent is Contact Privacy Inc. of Toronto, Ontario, Canada / Technology Online LLC of Silver Springs, Nevada, United States of America ("U.S."). 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 28, 2014. On February 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2014 and March 5, 2014, 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 Complainant on March 5, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 7, 2014.
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 Respondent of the Complaint, and the proceedings commenced on March 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 1, 2014.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on April 16, 2014. 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
Complainant is the owner of the mark JEFFERS, U.S. Trademark Registration No. 2102912, registered on October 7, 1997, for use in connection with non-medicated grooming preparations for pets, cats, dogs, horses, livestock, namely, topical shampoos, conditioners, sprays, crams, balms, ointments, etc. in Classes 3 and 5. The registration claims a date of first use of January 15, 1976.
Complainant has operated since at least 1976 under the JEFFERS trademark in connection with retail animal health supply industry. Complainant now operates a retail website, distributes over 3.46 million product catalogs each year and owns a 120,000 square foot distribution warehouse. Complainant operates online retail websites at "", "" and "" and prominently displays its JEFFERS mark on the top of each page of its website.
The disputed domain name was initially registered on March 6, 1996. From early 1999 to October 2000, the disputed domain name resolved to a website offering email services provided by , Inc. From 2001-2005, the disputed domain name resolved to a "" site that also offered a personalized email service. In 2008 and 2009, the disputed domain name resolved to various third party websites including "", "" and "", each website containing finance, travel, home mortgage, foreclosure and other links not related to Complainant's business. Sometime between April 10, 2012 and June 7, 2012, Respondent changed the content appearing on the website at the disputed domain name so that it appeared to be a "portal site" providing reverse searching links to third-party websites that compete with Complainant by offering information and products relating to equine supplies, horse products, horse veterinary supplies, discount equine supplies, equine veterinary supplies, horse saddlery, veterinary advice, and veterinary colleges. Complainant submitted copies of printouts from the "Way Back Machine" showing use of the website on these various dates, printed on February 26, 2014. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain name is identical and confusingly similar to its trademark JEFFERS, that Respondent has no rights or legitimate interests in respect of the disputed domain name and that Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant owns U.S. Trademark registration No. 2102912 registered on October 7, 1997, claiming a date of first use of January 15, 1976. The disputed domain name incorporates Complainant's trademark in its entirety.
The Panel finds that the disputed domain name is confusingly similar to Complainant's trademark. B. Rights or Legitimate Interests
Based on previous UDRP decisions, "a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP." See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
Complainant's allegations in the Complaint and evidence submitted on this issue are sufficient to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has no relationship with Complainant and has no permission from Complainant to use Complainant's trademark or any domain name incorporating that trademark. There is no evidence that Respondent is commonly known by the name "Jeffers". Nothing in the WhoIs contact information for Respondent implies that it is commonly known by that name.
The disputed domain name currently links to a portal website that offers links to numerous third party sites, some of which sell the same or similar goods and services as Complainant. Respondent presumably receives compensation in the form of "click through" or web page impression revenues from the third parties to whom visitors to the site are redirected. Prior panels have found that such conduct cannot constitute a bona fide offering of goods or services. See Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258; L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Humana Inc. v. Cayman Trademark Trust,WIPO Case No. D2006-0073. Accordingly, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Respondent has failed to come forward with any evidence demonstrating rights or legitimate interests in the disputed domain name.
The Panel finds that Respondent lacks any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. (Policy, paragraph 4(b).
The factors delineated in the Policy, paragraph 4(b), as supporting bad faith registration and use are "without limitation."
Although Complainant's U.S. trademark was registered on October 7, 1997, the registration claims a date of first use of January 15, 1976, which is unrebutted. Thus, the evidence indicates that Complainant had used its JEFFERS mark for more than 20 years prior to the registration of the disputed domain name by Respondent or its predecessor in interest. In addition, Respondent's use of the disputed domain name to provide links to equine products and other goods and services that compete with Complainant's goods and services indicates that Respondent has knowledge of Complainant's rights in its JEFFERS mark.
There is also evidence that Respondent has a track record of registering domain names that are identical or confusingly similar to third party marks and using those domain names to deceptively misdirect visitors to other third party websites. See, Urban Home v. Technology Online LLC / Whois Privacy Service Pty Ltd.,WIPO Case No. D2012-2437; American Council on Education, GED Testing Service LLC v. Registrant [4065093]: Domain Manager, Technology Online LLC,WIPO Case No. D2012-2287.
The evidence indicates that Respondent was aware of Complainant's trademark rights at the time of Respondent's registration of the disputed domain name and that the disputed domain name is being used in bad faith.
The Panel finds that Respondent has registered and is using the disputed domain name in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Date: April 30, 2014
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