The Complainant is Petco Animal Supplies Stores, Inc., United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Redacted for Privacy, WhoisGuard, Inc. / Waleed Dogar, Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2019. On October 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 14, 2019, 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 October 18, 2019 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 October 22, 2019. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2019. The Respondent sent informal emails to the Center on October 18, 2019 and November 13, 2019. The Center notified the Commencement of Panel Appointment Process on November 18, 2019. The Center appointed John Swinson as the sole panelist in this matter on November 26, 2019. 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 The Complainant is Petco Animal Supplies Stores, Inc., a company incorporated in the United States. The Complainant is a pet specialty retailer, with locations across the United States and Mexico. The Complainant was founded in 1965 and sells products and services related to pet animals, including live animals. The Complainant is the owner of a number of registered trade marks for the word mark PETCO (“the Trade Mark”), including Canadian registered trade mark number TMA669573, registered on August 10, 2006. The Complainant is also the owner of a domain name which incorporates the Trade Mark, being The Respondent Waleed Dogar is an individual of Canada. No formal Response was received from the Respondent and therefore little information is known about the Respondent. The Disputed Domain Name was registered on July 25, 2019. The Disputed Domain Name resolves to a blank page that lacks content. 5. Parties’ Contentions A. Complainant The Complainant makes the following submissions. Identical or Confusingly Similar The Complainant is a large, well-known American pet specialty retailer, with over 1,500 locations across the United States and Mexico. The Complainant was founded in 1965 and has traded under the PETCO brand since then. It also operates in cooperation with the Petco Foundation, an independent nonprofit organization created in 1999 to promote and improve the welfare of companion animals. The Complainant has spent substantial resources in advertising and promoting the PETCO brand throughout the world, including the United States. The Trade Mark is widely and uniquely associated with the Complainant and the Complainant has substantial goodwill in the mark. The Complainant has registered the Trade Mark throughout the world including in Canada, where the Respondent is based. By virtue of these registrations, the Complainant asserts it is the owner of the Trade Mark. The Disputed Domain Name consists exclusively of the Trade Mark, combined with the generic Top Level Domain (“gTLD”) “.app”, which it is standard practice to disregard. The Disputed Domain Name is identical, or alternatively confusingly similar, to the Trade Mark. Rights or Legitimate Interests The granting of trade mark registrations by the USPTO, CIPO and the EUIPO to the Complainant for the Trade Mark is prima facie evidence of the validity of the term PETCO as a trade mark, of the Complainant’s ownership of the Trade Mark and the Complainant’s exclusive right to use the Trade Mark in commerce on or in connection with the goods and/or services specified in the registration certificates. The Respondent as identified does not resemble the Disputed Domain Name in any manner. The Respondent is not commonly known by the Disputed Domain Name. Furthermore, the Complainant has not licensed, authorised or permitted the Respondent to register domain names incorporating the Trade Mark. The Disputed Domain Name redirects users to a website which resolves to a blank page. The Respondent has failed to make legitimate use of the domain name and website. The Disputed Domain Name is also being offered for sale on Sedo.com for USD 12,000, which far exceeds the Respondent’s out-of-pocket expenses in registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name on July 25, 2019, which is significantly after the Complainant filed for registration of the Trade Mark and after the registration of its primary On the basis of these factors, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Registered and Used in Bad Faith The Trade Mark is well-known internationally and in the United States, with trade mark registrations across numerous countries. The Complainant is a well-known pet specialty retailer, and searches of PETCO in various Internet search engines returns multiple links referencing the Complainant and its business. This demonstrates the Respondent knew, or should have known, of the Complainant’s brand and business. The Disputed Domain Name is an exact match to the Complainant’s Trade Mark, which is confusingly similar. It is illogical to believe that there is a plausible situation in which the Respondent would have been unaware of the Complainant’s brands at the time the Disputed Domain Name was registered. The close link between the Trade Mark and the Complainant strongly implies bad faith on the part of the Respondent, who has no connection with the product, in registering the Disputed Domain Name. The Disputed Domain Name currently resolves to an inactive site, though past Panels have noted that the word “use” in this context does not require a positive act. It can include passively holding a domain name. There is no plausible good faith reason or logic for the Respondent to have registered the Disputed Domain Name. It is more likely than not that the Respondent targeted the Trade Mark for some future use which would be competitive with or otherwise detrimental to the Complainant. By offering to sell the Disputed Domain Name on Sedo.com for USD 12,000, the Respondent has demonstrated an intention to sell for valuable consideration in excess of his out-of-pocket expenses. The Respondent had also, at the time of filing the Complaint, employed a privacy service to hide his identity. B. Respondent In his informal emails to the Center, the Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the Disputed 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 Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. The onus of proving these elements is on the Complainant even though the Respondent failed to submit a formal Response. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark. The Disputed Domain Name incorporates the entirety of the Trade Mark, with no additional elements. The gTLD “.app” can be disregarded under this element (see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Disputed Domain Name is identical to the Trade Mark. The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. The Panel considers the Complainant has made out a prima facie case. This finding is based on the following: - The Respondent is not using (and there is no evidence that the Respondent has demonstrable preparations to use) the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name resolves to a blank page. There is no evidence that the website at the Disputed Domain Name has ever been used in connection with a bona fide offering of goods or services. - The Complainant has not authorised or otherwise given the Respondent permission to use the Trade Mark in the Disputed Domain Name. - There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name. - The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Disputed Domain Name currently resolves to a blank page, and does not appear to have been active. The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. The Panel accepts the Complainant’s submissions that the Trade Mark and the Complainant are wellknown in the United States, Canada and other countries, having been in operation since 1965. The Complainant has developed a significant reputation in the Trade Mark, including in Canada where the Respondent is based. The Complainant has also operated a primary domain incorporating the Trade Mark, Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 of WIPO Overview 3.0). The Respondent has listed the Disputed Domain Name for sale for USD 12,000, which is for valuable consideration in excess of the Respondent’s likely out-of-pocket costs directly related to the Disputed Domain Name. Given that the Disputed Domain Name is identical to the Trade Mark, the Panel considers that the circumstances indicate that the Respondent’s intent in registering the Disputed Domain Name was in fact to profit from the Complainant’s Trade Mark and is thus indicative of bad faith (see section 3.1.1 of WIPO Overview 3.0). The Panel also considers it unlikely that the Respondent applied to register a domain name under the “.app” gTLD without enquiring whether the .com gTLD was available. Given that the Disputed Domain Name is almost identical to the Trade Mark and without the benefit of a formal Response from the Respondent, the Panel can reasonably infer that the Respondent knew that his registration would be identical or confusingly similar to the Complainant’s Trade Mark. The Panel finds that the Disputed Domain Name was registered in bad faith. The Disputed Domain Name resolves to a blank page. The fact that the Disputed Domain Name is not being used does not preclude a finding of bad faith (see section 3.3 of WIPO Overview 3.0 and Telstra Corporation Limited v Nuclear Marshmallows,WIPO Case No. D2000-0003). Section 3.3 of the WIPO Overview 3.0 considers passive holding and explains that: While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. The particular circumstances of this case which lead to a conclusion of bad faith use are: - the Trade Mark has a strong reputation and is widely known, as evidenced by numerous registrations worldwide and the Complainant’s evidence of its reputation and size; - the Respondent has not submitted a formal Response or provided any evidence of actual or contemplated good-faith use; - the Respondent has taken active steps to conceal his true identity through a privacy service (see section 3.6 of WIPO Overview 3.0); and - taking into account all of the above, it is not possible to conceive of any plausible good faith use by the Respondent. In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy. The Panel also notes that the Respondent’s contact details include an email address using the Disputed Domain Name. The Complainant has not made any submissions in this regard and there is no evidence before the Panel on the Respondent’s use of this email address (if any). The Panel notes that the use of a domain name for purposes other than to host a website may in appropriate circumstances constitute bad faith use (see section 3.4 of WIPO Overview 3.0). 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 John Swinson
Sole Panelist
Date: December 10, 2019
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