WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Julie M. Katz and Douglas W. Lambert v. HealthyPets, Inc. and HealthyPets.com
Case No. D2003-0960
1. The Parties
Julie M. Katz and Douglas W. Lambert ("Complainants") are individuals located in Fairbury, Nebraska, United States of America, represented by Rembolt Ludtke & Berger, LLP, United States of America.
Respondents are HealthyPets, Inc., Fremont and Palo Alto, California, United States of America, and HealthyPets.com, Hayward, California, United States of America ("Respondents"). The Complainants allege that the Respondents are one and the same business.
2. The Domain Names and Registrars
The domain names at issue are <petsuppliesforless.com> and <lambiarvet.com> (the "Domain Names"). The registrar for <petsuppliesforless.com> is Network Solutions, LLC, and the registrar for <lambiarvet.com> is Melbourne IT, Ltd., d/b/a Internet Names Worldwide (collectively known as the "Registrars").
3. Procedural History
On December 4, 2003, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainants via email. On December 5, 2003, the Center sent an Acknowledgment of Receipt of Complaint to Complainants. On December 8, 2003, the Center received hardcopy of the Complaint. The Complainant paid the required fee.
On December 11, 2003, after the Center sent a Request for Verification to the Registrars requesting verification of registration data, the Registrars confirmed, inter alia, that they are the registrars of the Domain Names and that the Domain Names are registered in the Respondentsí names.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On December 17, 2003, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondents together with copies of the Complaint with a copy to the Complainants. This notification was sent by the methods required under Paragraph 2(a) of the Rules.
On January 6, 2004, the Center advised Respondents that they were in default for failing to file a Response. On January 8, 2004, the Center received a communication from Respondents.
On February 9, 2004, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Panel"), the Center notified the parties of the appointment of a single-member panel.
After his appointment, the Panel accepted a submission from Respondents and a communication from Complainants for consideration in this matter.
4. Factual Background
The registrants of the domain names <petsupplies4less.com> and <lambriarvet.com> are alleged to be Pet Supplies for Less and Lambriar Animal Health Care, which are entities of unknown legal structure. The domain names are licensed to Pet Supplies 4 Less, LLC, a Nebraska limited liability company and to Lambriar Animal Health Care, LLC, a Kansas limited liability company. Complainants, together with Mr. Lambertís parents, own and operate the businesses known as "LambriarVet.com" and "PetSupplies4Less.com" and share a common ownership in one or both of the entities. The individuals, the registrants, the licensees and the businesses appear to have a unity of interest sufficient for the Panel to consider them collectively as proper Complainants for purposes of this dispute and shall refer to them collectively as "Complainants."
Complainants allege that they have registered service marks in PETSUPPLIES4LESS and LABRIARVET (the "Marks"). Complainants further allege that they registered the domain names <petsupplies4less.com> on February 22, 2000, and <lambriarvet.com> on June 5, 1997. Complainants have used the Marks and domain names continuously since their registrations. Complainants operate businesses which sell and distribute veterinary supplies, small animal pet supplies and medication, and large animal medications. The businesses are conducted through the Internet. The physical locations are in the states of Nebraska and Kansas, USA. Internet sales account for the majority of Complainantsí business. Complainants have spent significant advertising dollars on promoting the Marks and using their domain names, and have used the Marks and their domain names in a variety of ways in promoting their businesses.
Respondents registered the disputed Domain Name <lambiarvet.com> on June 29, 2001, and <petsuppliesforless.com> on November 15, 2002. Respondents are competitors of Complainants, selling pet supplies, food, medicines and health products worldwide over the Internet. Respondents do not do business either as "LambiarVet" or as "PetSuppliesforLess." Each of the Domain Names is re-directed to another of Respondentsí websites for "www.entirelypets.com" also known as "www.healthypets.com."
Complainants have attempted to communicate with Respondents regarding voluntary transfer of the Domain Names. Respondentsí promises to transfer the Domain Names have not been fulfilled.
Respondents have not filed a formal Response to the Complaint in this dispute. Instead, they have filed a one-page letter dated February 11, 2004, proclaiming that they are not in bad faith and that Complainants have no registration of the service mark PETSUPPLIESFORLESS. No further facts or authorities are provided.
5. Partiesí Contentions
A. Complainantsí contentions
(i) Complainants contend that they have registered service marks for PETSUPPLIES4LESS and LAMBRIARVET.
(ii) Complainants argue that the Domain Names are confusingly similar to the Marks, pursuant to Paragraph 4(a)(i) of the Policy, because they wholly incorporate the Marks with minor variations in spellings.
(iii) Complainants contend that Respondents have no rights or legitimate interests in the Domain Names, pursuant to Paragraph 4(a)(ii), and that Respondents have failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names.
(iv) Complainants argue that the Respondents have registered and are using the Domain Names in bad faith in violation of Paragraph 4(a)(iii).
Respondents cannot demonstrate rights or legitimate interest in the Domain Names under Paragraph 4(c)(i) because they have not made use, or demonstrable preparations to use, the Domain Names in connection with the bona fide offering of goods or services.
Respondents cannot demonstrate rights or legitimate interests in the Domain Names under Paragraph 4(c)(ii) because they are not commonly known under either of the Domain Names. Respondents have no connection or affiliation with Complainant, and have not received any license or consent, express or implied, to use the Marks in the domain names or in any other manner.
Respondents cannot demonstrate rights or legitimate interests in the Domain Names under Paragraph 4(c)(iii) because they are not making a legitimate noncommercial or fair use of the Domain Names without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Respondents have deliberately registered the Domain Names containing the Marks to attract the attention of Internet users and are thus misleading consumers.
Complainants contend that Respondents registered and are using the Domain Names in bad faith in violation of Paragraph 4(a)(iii). Complainants allege that the sole function of the disputed Domain Names is to interfere with Complainantsí businesses, and to re-direct Complainantsí customers to Respondentsí sites.
B. Respondentsí contentions
(i) Respondents dispute that the Complainants have a registration of the service mark PETSUPPLIESFORLESS. Respondents further allege that any service mark asserted by Complainants is generic and not entitled to protection.
(ii) Respondents do not dispute that the Domain Names are identical or confusingly similar to the alleged Marks.
(iii) Respondents do not dispute the Complainants contention that Respondents lack rights to or legitimate interests in the Domain Names.
(iv) Respondents deny that they registered or used the Domain Names in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Because both the Complainants and Respondents are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainants have met their burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001), No. 3.
Failure to File a Response
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.
Even though Respondents have failed to file a Response or to fully contest Complainantsí assertions, the Panel will review the evidence proffered by Complainants to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Enforceable Trademark Rights
Complainants contend that they have registrations of the Marks. Respondents contest that any registration exists for PETSUPPLIESFORLESS. Complainants have proffered evidence that an application is currently pending before the United States Patent and Trademark Office for a service mark on PETSUPPLIES4LESS.
The Panel finds that Complainantsí evidence regarding it allegedly registered Marks is insufficient. Furthermore, the Complainantsí evidence regarding its common law rights to the Marks is thin. However, Complainants have used the Marks continuously on the Internet for several years in a specific line of commerce. The Panel finds that the evidence presented by Complainants is sufficient to create secondary meaning to support a finding that Complainants have common law rights in each of the Marks. Therefore, the actual registration of either of the Marks is not necessary.
Respondents assert that no enforceable rights can be found because the Marks are generic. The Panel adheres to the position that such defenses are beyond the purview of the Panel. To achieve cancellation of a mark, Respondents should seek recourse in a court of competent jurisdiction.
The Panel finds that Complainants, for purposes of this proceeding, have enforceable rights in the Marks.
Identity or Confusing Similarity
Complainants further contend that the Domain Names are identical with and confusingly similar to the Marks pursuant to the Policy, Paragraph 4(a)(i).
Complainants argue that the Domain Names are confusingly similar to the Marks, pursuant to Paragraph 4(a)(i) of the Policy, because they wholly incorporate the Marks with minor variations in spellings.
Respondents have not contested the assertions by Complainants that the Domain Names are confusingly similar to the Marks.
As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainantís registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainantís trademark.
Generally, a user of a mark "may not avoid likely confusion by appropriating anotherís entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition ß 23:50 (4th ed. 1998).
The Panel notes that the entirety of the Marks is included in the respective Domain Names, with the exception of replacing "4" with "for" and deleting an "r" from "Lambriar." The Panel further finds that these differences are non-distinctive and appear to be an intentional misspelling of Complainantsí Marks and domain names.
Therefore, the Panel finds that the Domain Names are confusingly similar to the Marks pursuant to the Policy, Paragraph 4(a)(i).
Rights or Legitimate Interest
Complainants contend that Respondents have no rights or legitimate interest in the Domain Names pursuant to the Policy, Paragraph 4(a)(ii).
Paragraph 4(a)(ii) requires the complainant to prove that the respondent has no rights to or legitimate interests in the Domain Names. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).
The Policy, Paragraph 4(c), allows three nonexclusive methods for the Panel to conclude that Respondents have rights or a legitimate interest in the Domain Names:(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainants allege that Respondents cannot engage in a bona fide offering of goods and services when their sole purpose is to confuse Internet users and to re-direct Internet traffic to Respondentsí own websites. Complainants further allege that Respondents have never been known by or conducted business using the Domain Names. Complainants further allege that Respondents cannot make legitimate noncommercial use of the Domain Names because of Respondentsí intent to divert Complainantsí customers.
While Respondents have used the Domain Name <petsuppliesforless.com>, it was registered after Complainants use and registration of <petsupplies4less.com>. Given that Respondents are in competition with Complainants, Respondents registration and use to the Domain Name <petsuppliesforless.com> is not a bona fide offering of goods and services.
The Complainants have sustained their burden of producing evidence that Respondents lack rights or legitimate interests in the Domain Names. Although Respondents assert that the Domain Names are not being used in bad faith, Respondents have failed to come forward with concrete evidence establishing any of the three nonexclusive methods for the Panel to conclude that Respondents have such rights or interests. Therefore, the Panel finds that Respondents have no rights or legitimate interests in the Domain Names pursuant to the Policy, Paragraph 4(a)(ii).
Complainants contend that Respondents registered and are using the Domain Names in bad faith in violation of the Policy, Paragraph 4(a)(iii).
The Policy, Paragraph 4(b), sets forth four nonexclusive criteria for Complainants to show bad faith registration and use of domain names:(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 website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.
The Panel has already concluded that the primary purpose for Respondentsí registration of the Domain Names was to create a likelihood of confusion with Complainantsí Marks and domain names, thereby re-directing Internet traffic to Respondentsí own websites for commercial purposes. These facts are sufficient to meet the elements of bad faith under the Policy, Paragraph 4(b)(iv), and that Respondents registered and used the Domain Names in bad faith pursuant to the Policy, Paragraph 4(a)(iii).
The Panel concludes (a) that the Domain Names <petsuppliesforless.com> and <lambiarvet.com> are confusingly similar to Complainantsí Marks, (b) that Respondents have no rights or legitimate interests in the Domain Names and (c) that Respondents registered and used the Domain Names in bad faith. Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names be transferred to Complainants.
Richard W. Page
Dated: February 23, 2004