Complainants are Scentco, Inc. and Christopher Cote of Santee, California, United States of America, represented by Seed Intellectual Property Law Group, PLLC, United States of America.
Respondent is Domain Discreet Privacy Service of Jacksonville, Florida, United States of America / Vincent Poloma, Pet Nutritional Research of Powell, Ohio, United States of America, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2014. On March 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 14, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on March 17, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on March 17, 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 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2014. The Response was filed with the Center on April 8, 2014.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on April 15, 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 Christopher Cote is the owner of: U.S. trademark registration no. 4,293,317 for the trademark, SMANIMALS, for “stuffed and plush toys” in Class 28. Complainant Cotes’ trademark application was filed on January 11, 2012, with a date of first use in commerce of August 10, 2012. The mark was registered on February 19, 2013. Complainant Cote licenses the SMANIMALS mark to Complainant Scentco.
Complainants are also the owners of the domain name , which was registered on February 21, 2012.
Respondent registered the Domain Name on October 28, 2006. 5. Parties’ Contentions A. Complainants
(1) Identical or confusingly similar
Complainants contend that the Domain Name is identical or confusingly similar to a trademark in which Complainants have rights. Complainants state that they hold exclusive rights in the United States in the registered mark, SMANIMALS, in connection with Complainants’ scented stuffed animal toys. The Domain Name incorporates Complainants’ registered trademark in its entirety and is thus confusingly similar to the mark. Furthermore, it is well established that the specific Top-Level Domain, “.com,” does not affect a domain name for the purposes of determining whether it is identical or confusingly similar to a trademark. Accordingly, Complainants claim that where Respondent’s Domain Name contains the well-known SMANIMALS mark, the Domain Name is substantially identical or confusingly similar to Complainants’ mark.
(2) Rights or legitimate interests
Complainants claim that Respondent is not using and has not used the Domain Name in connection with a bona fide offering of goods or services. Instead, it has been used to divert users to a website with auto-generated pay-per-click links, including links to goods and services of Complainants’ competitors. Complainants urge that Respondent is thus attempting to intentionally attract, for commercial gain, users to its website by creating a likelihood of confusion with the SMANIMALS mark. Such use is insufficient to establish rights or legitimate interests in a domain name, and instead, is evidence of bad faith registration and use.
Complainants further state that they have not licensed or otherwise permitted Respondent to use the SMANIMALS mark or to apply for or use any domain name incorporating such mark. Further, Respondent is not commonly known as “smanimals” and to the best of Complainants’ knowledge, Respondent has never made a bona fide offering of goods or services in connection with the Domain Name. To the best of Complainants’ knowledge, Respondent has not applied for or obtained a state or federal trademark or service mark for the term, “smanimals.”
In sum, Complainants urge that the above facts establish that Respondent should be considered as having no rights or legitimate interests in respect of the Domain Name.
(3) Registered and used in bad faith
Complainants state that they sell a number of well-known and popular products under a number of marks, including scented pencils under the SMENCILS mark, scented pens under the SMENS mark, and scented stuffed animals under the SMANIMALS mark. Complainants also operate well-known websites under the domain names , , and , which attract millions of users. Complainants state that some of these domains were operational prior to Respondent’s registration of the Domain Name on October 28, 2006.
Complainants claim that the WhoIs information available from the D service showed that, as of October 26, 2013, the Domain Name was set to expire on October 28, 2013; however, it was renewed and is now set to expire on October 28, 2014. Therefore, the Domain Name was renewed sometime on or after October 26, 2013. Complainants argue that Respondent, by registering and/or renewing the Domain Name, which wholly incorporates Complainants’ registered mark, diverts Internet users to competitor’s websites, disrupts Complainants’ business and is likely to confuse Internet users. This constitutes bad faith registration and use under the Policy. Moreover, Complainants contend that Respondent is believed to be financially benefitting from such use through third-party advertisements, further evincing bad faith registration and use. The domain dispute policy for Respondent’s registrar provides that
“by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.”
Complainants thus contend that Respondent, having used the Domain Name in bad faith and subsequently having renewed it after the registration of Complainants’ SMANIMALS mark, has registered and used the Domain Name in bad faith pursuant to the Policy. B. Respondent
Respondent states that it has operated a business to provide goods and services to the pet industry since 1984. Respondent explains it does not retail products. Its products have been sold to authorized retailers, distributors, commercial breeders and public zoos. Respondent does not produce or sell items outside of the pet industry, and does not sell, in any manner, stuffed animals. In 1990, it developed a product line of foods for cage birds, small animals, reptiles and fish. Respondent claims that at that time, it created the unique and whimsical trademark, SM’ANIMALS, by improper contraction of the words “small” and “animals”. After some research, Respondent concluded that there was no violation or misuse of any existing trademark by choosing this name. Respondent affixed this mark to its line of goods and marked it with “TM”. Respondent has submitted a copy of the logo, last revised in May of 2000, and several copies of labels showing use of the mark and a photograph of a representative product.
Respondent asserts that on October 28, 2006, after conducting research for any conflict on the Internet, it registered in good faith the Domain Name . Respondent states that it has maintained continuous registration of the Domain Name since that date for the following reasons: (i) to protect its intellectual property on the Internet; (ii) to prevent others from using its mark to sell competitive or counterfeit goods; (iii) to show that the mark is in use; and (iv) to provide clear and easy to obtain information that would allow any reasonable person to contact Respondent.
(1) Identical or confusingly similar
Respondent argues that Complainants’ trademark application before the United States Patent and Trademark Office (USPTO) was incomplete and, therefore, the resulting registration is invalid. According to Respondent, even though Respondent’s usage was visible to any reasonable party, Complainants failed to submit a statement of concurrent use as required by law. Without all of the facts, the USPTO could not come to a valid decision on registration.
Respondent also claims that its registration of the Domain Name provided protection for Respondent’s rights on the Internet. Respondent has maintained registration of the Domain Name without lapse since 2006. Respondent used the mark SM’ANIMALS in conjunction with goods and services for an extended period of time prior to Complainants registration of SMANIMALS as a trademark. Complainants did not enter their claim until 2012, which is 5-1/2 years after Respondent registered the Domain Name. Respondent contends that the mark SM’ANIMALS is Respondent’s intellectual property and not Complainants’. Respondent further claims that the trademark used by Complainant is in direct conflict with Respondent’s mark. Respondent’s mark as used in trade, which differs only by the use of an apostrophe in the contraction, SM’ANIMALS, is virtually identical.
In addition, Respondent does not engage in any pay-per-click links or any redirection by use of the Domain Name. Complainant’s submissions show that any activities of this nature are the actions of the Registrar, R. The actions of R displease Respondent. Respondent has not given any permission, express or implied, to use the Domain Name for these purposes. Respondent does not profit in any manner from the actions of R. As the owner of the mark SM’ANIMALS, Respondent has not licensed or given permission to Complainants regarding use of this mark. Registration of a mark is not required. Respondent has clearly marked all goods and services with “TM” to show ownership of its intellectual property.
(2) Rights or legitimate interests
Respondent states that it acquired the Domain Name in October 2006 in conjunction with use of Respondent’s alleged trademark, SM’ANIMALS. Respondent further argues that Complainants, by their own admission, state there was no use of the trademark SMANIMALS until February 2012, approximately 5-1/2 years after Respondent’s registration of the Domain Name. Respondent, therefore, contends there is no possible way to have registered the Domain Name in any way other than to protect the Respondent’s intellectual property and to reserve this Domain Name for future use. Respondent contends that Complainants have registered the mark SMANIMALS without consideration of the prior use of Respondent and, therefore, the registration is invalid. Respondent further alleges that its products have been marked as “sm’animals” for at least fifteen years prior to registration of the Domain Name and this name is instrumental to its business.
(3) Registered and used in bad faith
As to Complainants’ allegation that Respondent registered the Domain Name in bad faith, Respondent contends that the registration was done in good faith and cites the fact that there was no conflict for 5-1/2 years. Furthermore, Respondent claims that Complainants registered the domain name, , in direct conflict with Respondent’s Domain Name. Complainants registered on February 21, 2012. At that time, Complainants had no legal rights to the mark, as Complainants’ mark was not registered until February 19, 2013 (although considered invalid according to Respondent). Respondent considers that Complainants’ registration was in bad faith and Complainants, by their own actions, created confusion on the Internet. Respondent argues that the mark, SM’ANIMALS, has been used in trade by Respondent for a considerable period of time.
Further, Respondent emphasizes that it has never used the Domain Name to engage in direct or indirect diversion of Internet users for profit or otherwise. Respondent states that any redirection of this Domain Name was done by R without the express or implied permission of Respondent. Respondent submitted a copy of a letter dated April 5, 2014, which was sent to R by mail, with a request to refrain from using the Domain Name for redirection to other websites.
Finally, Respondent states that Complainants’ registration of the domain name was done in bad faith to create confusion on the Internet. Respondent alleges that Complainants have used this confusion as an excuse to file this dispute in order to gain access to Respondent’s intellectual property and the Domain Name. Respondent considers this action to be one of reverse domain name hijacking and requests this finding from the Panel. 6. Discussion and Findings
In order to succeed in their claim, Complainants must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainants have rights. The Panel observes that the only difference between the Domain Name and Complainants’ registered mark, SMANIMALS, is the addition of ".com". It is generally accepted that the addition of the top-level suffix in the domain name (e.g., ".com") may be disregarded under the confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 (the applicable top-level suffix in the domain name is usually disregarded under the confusing similarity test, as it is a technical requirement of registration).
Respondent has contended that Complainants’ trademark application before the USPTO was incomplete and the resulting registration therefore invalid. However, the Panel is not in position to assess this argument as it is beyond the scope of the Policy. Any such concerns should be addressed to the USPTO.
Accordingly, the Panel concludes that the Domain Name is identical or confusingly similar to Complainants’ SMANIMALS trademark. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainants must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
In this case, Complainants presented information to show that the Domain Name has been used to divert users to a website with pay-per-click links, including links to goods and services of Complainants’ competitors. Complainants have further indicated that they have not licensed or otherwise permitted Respondent to use their SMANIMALS mark, and claimed that Respondent has not been commonly known by the name “smanimals”.
Respondent has stated that it developed a product line of foods in 1990 and created the name, “Sm’Animals,” by improper contraction of the words “small” and “animals”. It has submitted information to show how the name has been used on packaging for products sold by its company, Pet Nutritional Research of Powell, Ohio. Respondent claims that it has used the name in conjunction with goods and services for an extended period of time prior to Complainants’ registration of the SMANIMALS mark and domain name. Respondent registered the Domain Name in October 2006, while the SMANIMALS mark was registered in February 2013, with a date of first use in commerce of August 10, 2012. Regarding the pay-per-click links, Respondent claims it did not give permission to R to use the Domain Name for these purposes, it has not benefitted financially from these links, and it wrote a letter to R in early April 2014 to request that it refrain from using the Domain Name in this manner.
In the Panel’s view, based on the record in this case, Respondent has adequately rebutted Complainant’s showing. Although Respondent is mistaken in its view that registering the Domain Name is somehow sufficient “to protect [its] intellectual property on the Internet,” information was submitted to show that Respondent has used the term “Sm’Animals” in connection with its pet food business. The Domain Name, which was registered more than 5 years before Complainants applied to register the SMANIMALS mark, is almost identical to Respondent’s brand name for its company’s line of pet food, with the omission of the apostrophe placed between “Sm” and “Animals”. This suggests that Respondent registered the Domain Name in an effort to have a registration that mirrors its brand name. There is no evidence that Respondent has actually used the Domain Name in connection with its business; however, this, in itself, is not enough to demonstrate that Respondent has no rights or legitimate interests in the “smanimals” name corresponding to the Domain Name.
The Panel accordingly finds that Complainants have failed to demonstrate that Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
The Panel finds, on the record in this case, that Complainant has also failed to establish that the Domain Name was registered in bad faith, even if there is information to show that it has been recently used in bad faith in connection with a website containing auto generated pay-per-click links.
It is undisputed that Respondent registered the Domain Name more than 5 years before Complainants applied to register the SMANIMALS mark. In this context, the Panel finds persuasive Respondent’s explanation for why it registered the Domain Name, as it corresponds to the branding of its line of pet foods.
At the same time, Respondent is responsible for the use to which the Domain Name is put and, in particular, for what appears on the webpage linked to the Domain Name, even if the sponsored links may not have been generated by Respondent (see WIPO Overview 2.0, paragraph 3.8). The Panel observes, however, that Respondent claims to have received no financial benefit from the pay-per-click links and sent a letter in April 2014 to the Registrar, R, requesting that it refrain from using the Domain Name in this manner.
Finally, in this case where Complainants’ SMANIMALS trademark was registered in February 2013, more than 6 years after the Domain Name had been initially registered, the Panel finds that Respondent’s renewal of the Domain Name’s registration in October 2013 is not sufficient so to treat that Respondent is responsible for the use to which the Domain Name is put and does not amount to a registration for the purposes of the Policy, in accordance with paragraph 3.7 of the WIPO Overview 2.0. 7. Reverse Domain Name Hijacking
The Panel has considered Respondent’s request that a finding of reverse domain name hijacking be made in this case against Complainant. The Panel determines that this finding is not appropriate, particularly as Complainant is the owner of the registered mark, SMANIMALS. Complainant selected a domain name, , which corresponds to its mark. Moreover, Respondent does not have any registered trademark rights in the brand name for its pet foods line, Sm’Animals, and it was therefore more difficult for Complainant to assess whether Respondent had appropriate rights or legitimate interests in the Domain Name prior to filing its Complaint. 8. Decision
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Sole Panelist
Date: May 7, 2014
Full & Egal Universal Law Academy