Complainant is Labrador II, Inc. of Glendora, California, United States of America ("United States"), internally represented.
Respondent is Viva La Pets Inc. of Lindenhurst, New York, United States, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 5, 2016. On January 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2016. The Response was filed with the Center on January 27, 2016.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on February 8, 2016. 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 Labrador II, Inc. is a provider of retail store services in the United States and Canada for pet supplies. Complainant has submitted as Annex 3 to the Complaint a copy of its United States trademark registration for the mark PET DEPOT, for retail store services featuring pet supplies, that issued in September 2004.
Respondent Viva La Pets Inc. is a New York corporation. Respondent owns and operates a website at "" that offers pet supplies for sale. Respondent registered the disputed domain name in June 2006 and has used such for a website offering pet supplies for sale. Respondent's Chief Executive Officer filed in July 2010 an application in the United States Patent and Trademark Office ("USPTO") to register the mark ONLINEPETDEPOT for, inter alia, online retail services for pet supplies. That application was deemed abandoned by the USPTO in July 2011. Currently, the disputed domain name redirects to Respondent's website at "", which offers pet supplies for sale. 5. Parties' Contentions A. Complainant
Complainant asserts that it has used the mark PET DEPOT since November 1990 in connection with retail store services for the sale of pet supplies and that it has owned a United States federal trademark registration for PET DEPOT since 2004 for "retail store services featuring pet supplies." Complainant maintains that it has over 30 licensed retail locations across the United States and Canada under the name "Pet Depot".
Complainant contends that the disputed domain name is identical and/or confusingly similar to Complainant's PET DEPOT mark because it contains the PET DEPOT mark in its entirety. Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as (i) Respondent's use of the disputed domain name has no connection with a bona fide offering of goods or services; (ii) Respondent is not commonly known by the disputed domain name; and (iii) Respondent is using the disputed domain name to misleadingly divert consumers to Respondent's web site in order to sell pet supplies for Respondent's own benefit. Lastly, Complainant asserts that Respondent registered and is using the disputed domain name in bad faith to attract Internet users to Respondent's website for personal gain by creating a likelihood of confusion with Complainant's PET DEPOT trademark. B. Respondent
Respondent contends that it registered the disputed domain name in June 2006 and has used it since that time to sell pet supplies online and for email purposes. Respondent maintains that it has used the disputed domain name for ten years and that Complainant only recently complained about such. Respondent further asserts that it has never operated a physical retail store under the name "OnlinePetD", but has simply limited its activities to online use of the name "OnlinePetD". Lastly, Respondent argues that it is not acting in bad faith as it is simply redirecting the disputed domain name to Respondent's website at "" and alleges that there has been no confusion. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.1. Complainant has provided evidence that it has owned a trademark registration for the PET DEPOT mark in the United States since September 2004.
With Complainant's rights in the PET DEPOT mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain ".com") is identical or confusingly similar with Complainant's mark. B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The disputed domain name is confusingly similar to the PET DEPOT mark as it incorporates the PET DEPOT mark in its entirety. The addition of the generic term "online" at the head of the disputed domain name does not diminish the confusing similarity and, in fact, heightens the confusion by suggesting that the disputed domain name is the online version of Complainant's PET DEPOT retail store services for pet supplies. The Panel therefore finds that Complainant has satisfied the requirements of Policy, paragraph 4(a)(i) in establishing its rights in the PET DEPOT mark and in showing that the disputed domain name is confusingly similar to that trademark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Although the record before the Panel is very limited and Complainant has presented very little evidence regarding its own use of PET DEPOT, it is questionable from the evidence presented that Respondent has any rights or legitimate interests in the disputed domain name. While Respondent argues that it has allegedly used the disputed domain name for ten years, Respondent does not deny that Complainant owns and has used the PET DEPOT trademark for retail store services for pet supplies or that Respondent has used the disputed domain name for the online sale of pet supplies. Indeed, not only does Respondent admit that it is currently using the disputed domain name to redirect web traffic to its "" website, which likewise offers pet supplies for sale, but Complainant has provided evidence that Respondent unsuccessfully sought to register the ONLINEPETDEPOT mark in the United States for, inter alia, online retail store services featuring pet supplies and related products.
Respondent's argument that its use of the disputed domain name is legitimate appears to be premised on the notion that Complainant's use of PET DEPOT has been for physical retail store services for pet supplies, while Respondent's use of has been for online (Internet based) sales of pet supplies. The distinction between physical and online retail sales of pet supplies is almost nonexistent as the services are essentially retail services for pet supplies through different means. Consequently, a consumer familiar with retail stores under the PET DEPOT mark is likely to assume that a domain name with the word "online" and the identical PET DEPOT mark offering pet supplies is nothing more than an online version of the same PET DEPOT retail services for pet supplies. Respondent is likely fully aware that there is no real distinction between the retail sales of the very same products through stores or online, given that the United States trademark application for ONLINEPETDEPOT that was filed by Respondent's Chief Executive Officer in 2010 was rejected, in part, on this basis.
Such use of the disputed domain name by Respondent to promote its own sale of pet supplies is not a legitimate or bona fide use, but is clearly meant to capitalize on an association between Complainant's PET DEPOT mark and pet supplies. The Panel thus concludes that none of the circumstances of paragraph 4(c) of the Policy are evident in this case and that Complainant prevails on this element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
"(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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 website or location or of a product or service on your website or location."
In the present case, Respondent has registered a domain name that fully incorporates Complainant's PET DEPOT mark in conjunction with the common word "online" for the sale of pet supplies. Such combination creates a likelihood of confusion by suggesting to consumers that the disputed domain name relates to an online version of Complainant's PET DEPOT retail store for pet supplies. Respondent admits that it has used the disputed domain name for the sale of pet supplies and that it is now redirecting the disputed domain name to its own website at "" which likewise offers pet supplies for sale. Moreover, the evidence of record shows that Respondent unsuccessfully attempted to register the mark ONLINEPETDEPOT for, inter alia,online retail sales of pet supplies – services that the USPTO considered to be closely related to those in Complainant's pre-existing United States registration for PET DEPOT. Given Respondent's activities and admissions, and Complainant's prior-existing registration for PET DEPOT, the Panel can only infer that Respondent's actions have been undertaken in bad faith and for purposes of capitalizing on the association between the disputed domain name and Complainant's PET DEPOT mark for retail services for the sale of pet supplies. Accordingly, the Panel finds that Complainant succeeds under this element of the Policy. 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.
Georges Nahitchevansky
Sole Panelist
Date: February 19, 2016
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