WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mars UK Limited v. John Ritchie
Case No. D2002-0702
1. The Parties
The Complainant is Mars UK Limited of 30 Dundee Road, Slough, Berkshire, SL1 4JX, United Kingdom. The Complainant is represented by Clifford Chance Limited Liability Partnership of 200 Aldersgate Street, London EC1A 4JJ, United Kingdom.
The Respondent is John Ritchie whose address is 48 Font Street, Newbottle, Tyne & Wear, DH4 4EP, United Kingdom. The Respondent is represented by Mr. David Kay Sherwood-Smith of Slater, Smith, Smith-Sherwood & Co, Solicitors of 92/94 Newbottle Street, Houghton-le-Spring, Tyne & Wear, DH4 4AJ, United Kingdom.
2. The Domain Name and Registrar
The domain name in dispute is <pedigreepetfoods.com>. The Registrar of the domain name is Register.com of 575 8th Avenue – 11th Floor, New York, NY 10018, United States of America.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center")by email on July 24, 2002, and by hard copy on July 26, 2002. Acknowledgement of receipt of the Complaint was given by the Center on July 25, 2002. On July 29, 2002, the Center contacted the Registrar at Register.com by email which confirmed on the same day that <pedigreepetfoods.com> was registered through Register.com Inc with the Respondent, Mr. John Ritchie, as the current registrant.
On July 30, 2002, the Center gave notice to the Complainant's representatives that it regarded the Complaint in its original form as defective in that there were discrepancies as to the domain name the subject of the Complaint in a number of places within the Complaint. Accordingly the Complainant prepared an amended Complaint which was emailed to the Center on July 30, 2002, and sent by hard copy on August 1, 2002. Notification of the Complaint was given by the Center to the Respondent on August 2, 2002, by post, courier, facsimile and email. A response was received from the Respondent on August 29, 2002, by hard copy and by email on August 30, 2002. Acknowledgement of the receipt of the response was sent to the Respondent's representatives, Messrs Slater Smith-Sherwood & Co on August 30, 2002.
The Panel understands that all requisite fees have been paid by the Complainant. The Panel has made no interim orders in the proceedings. The language of the proceedings is English.
A panel consisting of a sole panelist, Mr. Clive Duncan Thorne was appointed on September 11, 2002. Mr. Thorne has completed a Statement of Acceptance and Declaration of Impartiality and Independence. The Panel's decision is scheduled to be received by the Center by September 25, 2002.
4. Factual Background
The Complainant, Mars UK Limited, is part of the Mars Group of Companies that specialise in creating quality products in five primary product groups including pet care, snack foods (including confectionary), main meals, drinks and electronics.
The Mars Group of Companies is one of the world's leading manufacturers of pet care products sold in over 100 countries throughout five continents. Among Mars' best know products is "Pedigree". The Complainant has exhibited at Annex D photographs of packaging for Mars "Pedigree" products, all of which prominently display the mark "Pedigree". The Complainant also points out that until approximately four years ago the pet food division of the Mars Group traded as Pedigree Pet Foods although this division is now known as Masterfoods.
Mars has registered its trade mark PEDIGREE in numerous countries worldwide including the United Kingdom. The trade mark PEDIGREE is registered in a number of classes, including classes 5, 28 and 31 in respect of various products including, in particular, pet care and pet food. Details of some of the registrations worldwide are attached at Annex E to the Complaint.
The annual sales and advertising and promotional expenditure for the Complainant's Pedigree pet car products are very substantial. Sales in the continent of Europe by net sales value in 1999 alone were over US$633 million, whilst advertising and promotional expenditure in the continent of Europe for Pedigree products in 1999 was over US$ 82 million.
The Complainant submits that as a result of its long, continuous and exclusive use the mark "PEDIGREE" has acquired a "secondary" meaning so that it is associated by consumers and the public with pet care products. It submits that the mark is a well known mark within the meaning of Article 6 bis of the Paris Convention 1883.
The Panel, in the absence of any evidence to the contrary accepts the evidence of the Complainant's trade mark rights and in particular finds that the Complainant has valid trade mark registrations in respect of pet care and pet food products for the mark "Pedigree" as well as unregistered trade mark rights arising as a result of the Complainant's very substantial sales, advertising and promotional expenditure.
The immediate history of the present dispute arises as a result of the Respondent's registration of the domain name <pedigreepetfoods.com> on June 2, 2000. It appears, according to the Complainant, that it did not learn of the registration of this domain name until August 2001. The Complainant's enquiries led it to ascertain that the domain name does not resolve to an active website and is being offered for sale on the website "Register.com". The Panel has seen a copy of this website page annexed at Annex F to the Complaint.
As a result of this on September 25, 2001, the Complainant's representatives, Clifford Chance, wrote to the Respondent objecting to the Respondent's registration of the domain name <pedigreepetfoods.com>. It requested that the Respondent transfer the domain name to the Complainant.
The Respondent's solicitors Messrs Slater, Smith, Sherwood-Smith & Company replied on September 28, 2001. The Respondent apparently claimed the domain name was registered with the full knowledge and approval of the Complainant. It referred to a meeting between the Respondent and an employee, a Mr. Wall, of the Complainant and stated that the registration of the domain name was carried out as a part of a proposed business venture between the Respondent and the Complainant.
The Complainant duly investigated these claims and found that its employee, Mr. Wall, had attended a meeting with the Respondent to discuss launching an Internet site called <pethelp.com>. It would appear however that this venture was not commercially viable and the Complainant did not pursue the matter any further. Apparently at no time during the discussions did the Respondent mention the domain name.
Clifford Chance therefore wrote again to the Respondent's solicitors on March 11, 2002, pointing out that they had contacted Mr. Wall and that Mr. Wall had informed Mr. Ritchie that Mars were not interested in pursuing the idea of an Internet site any further. Clifford Chance indicated that Mr. Ritchie did not mention the domain name <pedigreepetfoods.com> or <pedigreepetfood.uk.com>.
There has been further correspondence between the parties representatives culminating in a letter from the Respondent's representatives in which they refer to a "detailed opinion from Counsel" and a case apparently called "eFax.com.Inc v. Oglesby" (reported in The Times March 16, 2000) and asserting that in that case the court considered the use of generic terms and determined that trade mark and passing off law had never given monopolies over generic terms. The words "pedigree" and "pet foods" were in their view generic. No further correspondence has been exhibited and placed before the Panel.
The facts are not disputed by the Respondent in its Response. The Panel therefore proceeds on the basis of this evidence.
5. Discussion and findings
Under paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy the Complainant had the burden of proof in respect of the following three elements:-
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel proceeds to deal with each of these elements in turn.
(i) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
For the reasons set out above the Panel has come to the conclusion that the Complainant has established that it has both registered and unregistered trade mark rights in respect of the mark "pedigree". Moreover it is quite clear from the Complainant's evidence of use of the mark set out at annex D that the mark is used in respect of pet food products.
The Respondent submits that the words "pedigree" and "pet foods" are generic terms and suggest that the words in combination are more than likely to give the impression of food or pedigree breeds. In the light of the evidence of use adduced by the Complainant the Panel is unable to accept this submission. Accordingly it finds that the domain name <pedigreepetfoods.com> is confusingly similar to a trade mark in which the Complainant has rights.
(ii) The Respondent has no rights or legitimate interest in respect of the domain name
In support of its submissions the Complainant points out that the domain name does not resolve to an active website and is being offered for sale on the website "Register.com".
It also submits that the Complainant has not licensed or otherwise permitted the Respondent to use its PEDIGREE trade mark nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating this mark. It submits that the extent of use and notoriety of the PEDIGREE mark is such that it is "quite simply not credible" for the Respondent to have used or to have prepared to use the domain name in dispute in connection with a bona fide offering of goods or services.
In response the Respondent admits that the domain name does not resolve to an active website. However he relies upon what it regards as a "fact" that in June 2000, the Respondent was involved in the wholesale (sic) of pet foods related products and set up a website "pethelp.uk.com". A company was formed, Pethelp UK Limited, office premises were secured and fitted out in connection with the operation. The intention of the Respondent was to provide advice and articles concerning pet purchase and general health care. In the Panel's view it is not necessary to go into this issue. The circumstances surrounding the company Pethelp UK Limited offer no support for the submission that the Respondent is entitled to use the mark PEDIGREE. The mark is well known in respect of pet foods and pet food products.
The Panel therefore finds for the Complainant that the Respondent has no rights or legitimate interests in respect of the domain name in issue.
(iii) The domain name has been registered and is being used in bad faith
In support of its submissions the Complainant contends that evidence of bad faith registration and use is established by the following circumstances;
(a) Because the trade mark PEDIGREE is an extremely well known mark it is inconceivable that the Respondent would not be aware of this fact since the Respondent is a retailer and wholesaler of pet foods.
(b) The widespread use and reputation of the trade mark PEDIGREE is such that members of the public in the UK and elsewhere will inevitably believe that the entity owning the domain name <pedigreepetfoods.com> is the Complainant or otherwise is associated with the Complainant. It points out that until four years ago the pet food division of the Complainant traded as Pedigree Pet Foods, a fact which the Respondent must have been aware of.
(c) Any realistic use of the domain name can only constitute a misrepresentation of an association with the Complainant and its goodwill and thus constitute passing off and trade mark infringement.
The Complainant also relies upon the fact that the Respondent has advertised the domain name for sale on the website "Register.com"
In response the Respondent submits that it has not acted in bad faith. Despite the fact that the trade mark "PEDIGREE" is a well known trade mark brand (which appears to be admitted by the Respondent) it submits the domain name is synonymous with Pedigree animals such as cats and dogs. The Panel would be inclined to accept the Respondent's submission if the domain name consisted only of the mark "pedigree". However the domain name consists of the words "pedigree" and "pet foods". In the Panel's view and taking into account the evidence of the Complainant's rights, this submission will not succeed. The Panel accepts that in the circumstances and particularly given the business discussions that apparently took place between the Respondent and Mr. Wall and also bearing in mind the fact that the Respondent had trade knowledge it is as is put by the Complainant "inconceivable" that the Respondent would not be aware of the Complainant's rights.
In these circumstances the Panel is prepared to find that the Respondent registered and used the mark in bad faith within the Policy.
Accordingly it follows that the Complainant has succeeded in its Complaint.
The Panel finds for the Complainant and orders that the Respondent, John Ritchie, transfers the domain name, <pedigreepetfoods.com> to the Complainant, Mars UK Limited.
Clive Duncan Thorne
Dated: September 25, 2002