The Complainant is VFC Central, LLC, United States of America (“United States”), represented by Brann & Isaacson, United States.
The Respondent is Covetrus Group Ltd / Robert Simpson, United Kingdom.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2021. On July 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 9, 2021, 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 amendment to the Complaint on July 9, 2021.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on July 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2021. The Response was filed with the Center on July 20, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 6, 2021. 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 BackgroundThe Complainant is the trademark holding entity within the Covetrus group. COVETRUS is a global animal-health technology and services company. Amongst other things, it provides prescription management, practice and inventory management tools for veterinarians. According to the Complaint, COVETRUS has 100,000 customers around the world, supporting thousands of veterinary practices. According to the print out of its website included in Annex 13, it has 22,000 veterinary practices using its management software more than 11,000 using its prescription management software. It has 5,500 employees.
In 2020, its sales in the United Kingdom were in excess of USD 545 million.
The Complainant is the owner of registered trademarks for COVETRUS in:
(a) the United Kingdom, Registered Trademark No. UK00003350962, which was filed on November 5, 2018, and formally entered on the Register on December 18, 2020;
(b) European Union Trademark No. 017980819, which was also filed on November 5, 2018, and registered on December 7, 2020; and
(c) United States Registered Trademark No. 5,962,742, which was registered in the Principal Register on January 14, 2020, and claims first use in commerce in the United States on February 8, 2019.
Each of these trademarks is registered in respect of a range of goods and services in International Classes 9, 35, 36, 40, 42 and 44 including “operating on-line marketplaces for veterinary practices featuring pet supplies, pet medication, and pet food” in class 35 and in class 40 “Custom manufacture of veterinary pharmaceutical and animal health products for others”.
The Respondent1 registered both disputed domain names on January 5, 2021.
The individual Respondent was employed by Covetrus in the United Kingdom as its Safety & Security Supervisor of Customer Operations from April 2018 until February 26, 2021. When his employment started, Covetrus was known as Henry Schein Group. At some unspecified point after that, the name change to “Covetrus” occurred.
The individual Respondent is the sole director of the corporate Respondent. The corporate Respondent was incorporated on January 5, 2021, disclosing in its Companies House record that the nature of its business was “retail sale via mail order houses or via internet”.
According to the Complaint, earlier this year both disputed domain names redirected as shown in Annex 3 to the domain name
At the time the decision is being prepared, the domain name
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly SimilarThe first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks COVETRUS identified in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (gTLD) component of the disputed domain names as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.group” and “.store” gTLDs, therefore, each disputed domain name consists only of the Complainant’s registered trademark. Accordingly, the Panel finds that the Complainant has established that each disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The individual Respondent was affiliated with the Complainant’s corporate group as a security employee when the disputed domain names were registered. However, the Complainant states (and the Respondent does not dispute) that the disputed domain names were registered without its authorisation and, in fact, the Respondent is not authorised to use the disputed domain names. Nor is the Respondent affiliated with the Complainant.
The products being offered for sale from the website to which the disputed domain names resolved are not the Complainant’s products or associated with the “Covetrus” group.
The Respondent claims a legitimate interest in the disputed domain names on the basis of its registration and incorporation under the corporate Respondent’s name which, the Respondent says, conducts a legitimate trade in general e-commerce supplies such as coffee and other goods to the general public, not doing any business to business trade.
It is clear from the record in this case that the corporate Respondent was incorporated under its name well after the Complainant’s corporate group adopted the name COVETRUS and, moreover, with knowledge that COVETRUS was the Complainant’s trademark as the individual Respondent was an employee of the COVETRUS business in the United Kingdom.
In such circumstances, the adoption and registration of the corporate Respondent under the name “Covetrus” does not defeat the Complainant’s prior trademark rights, and is not sufficient in itself considering the circumstances of this case to give rise to rights or legitimate interests.
As noted above, the first disputed domain name does resolve now to a website, which purports to offer “premium and everyday tea and coffee supplies from around the globe”.
While there are some tea and coffee products apparently offered for sale from the website, the website also appears to offer pet supplies for sale. In addition, this website appears to be a second, more recent iteration of the website. The first version of the website simply offered pet supplies under the banner “Luxury Pet Accessories – Covetrus Group Ltd”. Accordingly, the Panel has considerable reservations about the claim that retailing of tea and coffee products is the nature of the Respondent’s business.
The claim that the Respondent uses the first disputed domain name in connection with a retail business rather than the B2B business apparently conducted by the Complainant’s group does not assist the Respondent in this case. First, the Complainant’s registered trademarks include specifically:
“retail of animal health products, animal health medication and animal health pharmaceutical products and supplies for animal health from a distributorship; retail veterinary pharmacy services; mail order veterinary pharmacy services.”
in International Class 35 in addition to “operating on-line marketplaces for veterinary practices featuring pet supplies, pet medication and pet food”.
Accordingly, the Respondent’s services, assuming in the Respondent’s favour it is in fact genuinely offering for sale pet accessories and pet food, therefore, are very closely related to the services in International Class 35 covered by the Complainant’s registered trademarks.
There is also a close relationship between the other “B2B” services offered by the Complainant and the Respondent’s retail services. The Respondent’s retail services do not appear to the Panel to be so removed from the Complainant’s B2B services that the general public would not think the Respondent’s services were not associated with the Complainant especially when offered through use of a disputed domain name identical to the Complainant’s trademark.
In that connection, the Complainant’s trademark is not a descriptive or geographical term. It is an invented or coined term. As a name or sign, it has significance in relation to goods and services associated with pets and veterinary services solely because of its adoption and use by the Complainant’s group.
Accordingly, the Panel considers that the use of a disputed domain name, which is identical with the Complainant’s trademark, does not constitute use of the disputed domain name in connection with a good faith offering of goods or services. Rather, it appears that the Respondent has adopted the first disputed domain name to trade on the significance of COVETRUS as the Complainant’s trademark.
That conclusion is reinforced by the Respondent’s use of the second disputed domain name – simply to offer it for sale at a price of USD 4,000,000. On the record in this case, it appears that the only reason why the second disputed domain name could have anything approaching that kind of value is the fact that it is identical to the Complainant’s trademark.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name, a prima facie case that the Respondent did not rebut. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad FaithUnder the third requirement of the Policy, the Complainant must establish that the disputed domain names have been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As the individual Respondent was an employee of the “Covetrus” group when the disputed domain names were adopted and registered, there can be no dispute in this case that the Respondent was aware of the Complainant’s trademark.
For the reasons discussed in section 5B above, the Panel considers it likely that the Respondent registered both disputed domain names to take advantage of their significance as the Complainant’s trademark. As noted there, the Complainant’s trademark is an invented term which has significance only as the Complainant’s trademark. It is not a descriptive or geographical term. In the circumstances of this case where the Panel has found that the Respondent does not have rights or legitimate interests in either of the disputed domain names, therefore, the Panel finds the Respondent’s registration of them constitutes registration in bad faith under the Policy.
Correspondingly, by offering the second disputed domain name for sale for a price of USD 4,000,000, the Respondent has used it in bad faith. For example, paragraph 4(b)(i) of the Policy provides:
“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.”
Further, having regard to the matters discussed in section 5B above, the way the Respondent has used the disputed domain names is use in bad faith contrary to the paragraph 4(b)(iv) of the Policy:
“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 web site or location or of a product or service on your web site or location.”
Accordingly, the Complainant has established all three requirements under the Policy.
6. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names,
Warwick A. Rothnie
Sole Panelist
Date: September 20, 2021
1 Unless it becomes necessary to distinguish between them, the Panel will refer simply to “the Respondent” as including both the individual and corporate Respondents.