WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Petland, Inc. v. COM.sortium, LLC
Case. No. D2001-0430
1. The Parties
The Complainant is: Petland, Inc., an Ohio corporation located at 250 Riverside Street, Chillicothe, Ohio, 45601, U.S.A. The Complainant is represented by Thomas F. Zych, Esq., Thompson Hine & Flory LLP, 3900 Key Center, 127 Public Square, Cleveland, Ohio 44114, U.S.A.
The Respondent is: COM.sortium, LLC, a New York company located at 805 Third Ave., New York, New York 10022 U.S.A.
2. The Domain Name and Registrar
The domain name in dispute is: <petland.com>.
The registrar for the disputed domain name is Network Solutions, Incorporated ("NSI"), 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on March 30, 2001. Also on March 30, 2001, the Center requested that the registrar NSI check and report back on the registrant for the domain name <petland.com>. On April 3, 2001, NSI reported to the Center that the registrant was the Respondent in this proceeding.
On April 4, 2001, the Center forwarded a copy of the Complaint along with the Notification of Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. The Respondent did not file a Response within the twenty (20) day time period required by the Rules (Rule 5), and on April 25, 2001, was declared in default.
The Administrative Panel submitted a Declaration of Impartiality and Independence on April 30, 2001, and the Center proceeded to appoint the Panel on May 2, 2001. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by May 16, 2001.
4. Factual Background
The Complainant franchises the operation of retail pet supply stores in the United States of America, Canada and several other countries. Complainant has provided pet store services and goods since 1967, under its Petland mark, and now claims to sell approximately 1,200 products using the Petland trademark.
The Respondent registered the disputed domain name <petland.com> on January 6, 1996, and renewed the registration on December 18, 2000. The parties had an exchange of written correspondence in January, 2001, (Complaint Exhibits 8 and 16) during which the Complainant alleged trademark infringement and demanded the Respondent transfer the domain name to the Complainant. According to Complainant, there have also been intermittent telephone conversations since the Respondent registered the disputed domain name in 1996, but the parties never succeeded in settling this dispute (Complaint Exhibits 3 and 9).
The Complainant now is seeking transfer of the disputed domain name in this proceeding.
5. The Parties' Contentions
- Complainant owns several trademark and service mark registrations consisting of or containing the word Petland.
- Complainant has expended millions of dollars to promote its Petland marks and the goods and services that bear those trade and service marks.
- With the exception of the ".com" top-level domain indicator, the disputed domain name <petland.com> is identical to Petland, Inc.'s registered trademarks and service marks.
- Respondent has no rights or legitimate interests in the disputed domain name.
- Respondent is likely to misuse the disputed domain name to divert Complainant's customers.
- Respondent registered the disputed domain name primarily for the purpose of selling it to Complainant for consideration far in excess of Respondent’s out-of-pocket expenses.
- Respondent has registered and used the disputed domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name and has engaged in a pattern of such conduct.
- The fact that the Respondent has held the domain name for five (5) years without using it is evidence of bad faith.
- The disputed domain name should be transferred to the Complainant.
Respondent did not file a Response and is in default in this proceeding.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name <petland.com> transferred to it, Complainant must prove the following (the Policy, paragraph 4 (a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant has provided exemplary copies of several of its Petland mark registrations on the principal register of the United States of America. For example: no. 1,113,136 for aquariums in international classes 16 and 42 dated February 13, 1979; and no. 1,061,413 for retail pet store services in international class 42 dated March 15, 1977, (Complaint Annexes 4 and 6).
The disputed domain name, <petland.com>, is identical to the Complainant's Petland mark since it is well settled in these proceedings that ".com" and other top-level domain designations are not to be considered in assessing mark similarity (see for example, Christian Dior Couture SA v. Liage Int'l Inc., ICANN/WIPO Case No. 2000-0098, March 24, 2000). Moreover, the Respondent admits in correspondence addressed to the Complainant dated January 19, 2001, that many Internet navigators contacted the Respondent at the disputed domain name because they mistakenly thought they would find the Complainant (Complaint, Annex 8).
The Panel finds the disputed domain name is identical to the Complainant's trade and service mark.
Legitimate Rights or Interests
The Complainant alleges it has never given the Respondent permission to use its Petland mark contained in the disputed domain name. The Respondent is in default and has made no effort to show any type of bona fide use of the disputed domain name. Indeed, all the evidence on record points to the Respondent's prolonged non-use of the disputed domain name. (for example, the Respondent's own words to this effect in its January 19, 2001, letter to the Complainant, Complaint Annex 8).
Registered and Used in Bad Faith
The Complainant alleges the Respondent registered the disputed domain name in order to prevent the Complainant from registering it and that the Respondent has engaged in a pattern of such conduct. A second instance of the Respondent's conduct conforming to this pattern, according to the Complainant, in fact involves another trademark belonging to the Complainant: <aquariumadventure.com> (the Complaint at pp. 9 and 10 and Annexes 13 and 14). A third instance is that the Respondent registered the disputed domain name a second time during a five (5) year period (Complaint, p. 9 and Annex 1). The Panel accepts that these facts are a violation of the Policy at 4(b)(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; "(see also Twentieth Century Fox Film Corporation v. DVD Monthly, ICANN/WIPO Case No. D2000-1355, January 16, 2001, involving two domain names of the Complainant)
The Complainant also alleges that the Respondent has made no use of the disputed domain name from the time the Respondent registered it on January 6, 1996. The circumstances of this Case bear this fact out. The Panel is in accord with the Complainant that the passive holding of the domain name for some five (5) years with knowledge of the Complainant's trademark rights in the name constitutes bad faith. Other panels adjudicating under the Policy have found that shorter time periods of passive holding under comparable circumstances constituted bad faith (Georgia Gulf Corporation v. The Ross Group, ICANN/WIPO Case No. D2000-0218, June 14, 2000, involving "warehousing" a domain name for one and one-half years).
Finally, the Panel also finds the Complainant has established that the Respondent attempted to sell the disputed domain name back to the Complainant for far more than the Respondent paid for it. The Panel believes that only so much weight should be given to the affidavits of the Complainant's own management stating the Respondent contacted them a number of times asking for ten (10) thousand dollars U.S. and more for the domain name. But these affidavits are corroborated by the Respondent's other actions: the Respondent kept the domain name inactive for five (5) years; also, in its letter to the Complainant dated January 19, 2001, cited above, the Respondent stated: "we would consider meeting with your client to discuss a mutually beneficial resolution to this matter." (Complaint, Annex 8) This is fairly standard code for an offer to sell a domain name. Few domain name registrants in violation of the Policy nowadays are willing explicitly to commit their intentions to paper as they were several years ago. The Panel thus finds the Respondent also registered and was using the disputed domain name in violation of the Policy at 4(b)(i).
The Respondent, COM.sortium, LLC registered a domain name identical to the Complainant's trademark; the Respondent has no legitimate rights or interests in the domain name; and the Respondent registered and was using the domain name in bad faith. Pursuant to ICANN Policy paragraph 4(i) and Rule 15, the Panel orders that the disputed domain name, <petland.com>, be transferred to the Complainant, Petland, Inc.
Dennis A. Foster
Dated: May 15, 2001