WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vet Med Direct, LLC v. Adam Overton dba VetMedDeals
Case No. D2007-1012
1. The Parties
The Complainant is Vet Med Direct, LLC, Fairbury, Nebraska 68352, United States of America, represented by Rembolt, Ludtke LLP, Lincoln, Nebraska, United States of America.
The Respondent is Adam Overton dba VetMedDeals, of Overland Park, Kansas, United States of America, represented by Hovey Williams LLP, Kansas City, Missouri, United States of America.
2. The Domain Name and Registrar
The disputed domain name <vetmeddeals.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2007. On July 16, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2007. The Response was filed with the Center on August 9, 2007.
The Center appointed Mark V.B. Partridge as the sole panelist in this matter on August 24, 2007. 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
Complainant has registered the mark VMD VET MED DIRECT and Design on the Principal Register of the United States Patent and Trademark Office (“USPTO”), Reg. No. 2,901,827, dated November 9, 2004, in International Class 35 for “Wholesale and retail store services featuring animal healthcare products, namely, medications, food and pet supplies”, claiming date of first use and first use in commerce of February 2, 1999. Exclusive use of the term “VMD VET MED” was disclaimed apart from the mark as shown.
Complainant is registrant of the domain names <www.vetmeddirect.com>, <www.1800vetmeds.com>, <www.1866vet-meds.com>, <www.1866vet-meds.net> and <www.1800vetmeds.net> and operates a commercial website at the URL <www.vetmeddirect.com>.
Complaint sells and distributes veterinary supplies, small animal pet supplies and medications and large animal medications. Complainant organized as a limited liability company called Vet Med Direct, LLC under the laws of the state of Nebraska on February 2, 1999.
Respondent is the current registrant of the disputed domain name <vetmeddeals.com>. A Network Solutions WHOIS database search printout furnished by Complainant indicates the <vetmeddeals.com> domain name was registered on October 18, 2005. Respondent has been actively using the domain name <vetmeddeals.com> since at least as early as January 27, 2006.
5. Parties’ Contentions
Complainant claims rights in the word service marks, “VETMEDDIRECT.COM”, “1800VETMEDS.COM”, “VET MED DIRECT”, “VMD VET MED DIRECT” and the vanity phone number “877.4VETMED” based on use in commerce and as evidenced by its USPTO registration of VMD VET MED DIRECT and Design.
Complainant states that it has created a family of marks and domain names based on its official name: Vet Med Direct, LLC.
Complainant asserts any marks, domain names, or phone numbers which use any form of the elements “Vet Med” or “Vet Meds” alone or in combination with any other words or symbols dilute Complainant’s marks and seriously damage the ability of its marks to identify Complainant as the source of its services.
Complainant argues Respondent’s <vetmeddeals.com> domain name is almost identical in appearance and pronunciation when compared to Complainant’s family of marks; the overall commercial impression created by Respondent’s domain name is identical to Complainant’s service marks and finally, Respondent’s domain name is a minor variation of Complainant’s service marks.
Complainant alleges Respondent does not do business as <vetmeddeals.com> or VetMedDeals; but instead uses the names to misidentify Complainant and to channel Complainant’s customers to Respondent’s primary website, “www.24hourpet.com”.
Complainant believes that a Simon Elliott owns or is affiliated with the Respondent. Complainant states Mr. Elliott formerly conducted business with the Complainant and is familiar with the Complainant’s websites and products.
Respondent contends Complainant has failed to prove it has trademark rights in VET MED through the submission of any documentation showing use of the term as a trademark.
Respondent denies that Complainant has valid trademark rights since its proferred “family of marks” incorporate terms that are largely descriptive, and as a result are weak service marks. Respondent notes Complainant has registered only VMD VET MED DIRECT and Design which contains a disclaimer for VET MED DIRECT but has not sought to register any other marks incorporating “vet med” with the USPTO.
Respondent contends he has rights and legitimate interests in the disputed domain name because it was used in connection with a bona fide offering of goods and services prior to notice of the dispute.
Respondent rejects the contention that he registered or used the disputed domain name in bad faith. Respondent argues the terms “vetmed” and “vet med” are descriptive terms when used in conjunction with veterinary products and services. As such, Respondent’s use of the descriptive terms “vetmed” and “deals” in connection with a website that offers veterinary medicines is a legitimate fair use.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief, e.g., that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant owns a valid registration of VMD VET MED DIRECT and Design with “VMD VET MED” disclaimed. A disclaimer of a component of a composite mark means that, in so far as that particular registration is concerned, no rights are being asserted in the disclaimed component standing alone. See SpragueElec. Co. v. Erie Resistor Corp., 101 USPQ 486, 486-87.
Complainant operates a website at “www.vetmeddirect.com” and uses VET MED DIRECT as a trademark.
Complainant has not presented sufficient evidence to establish trademark rights in other names containing “vet med”, in its alleged “family of marks” or in “vet med” alone.
Respondent has submitted evidence showing that “vet med” is a common descriptive or generic term in the filed of veterinary medicine, as confirmed by Complainant’s disclaimer in its USPTO trademark registration. Respondent has also shown the co-existence of many names, domain names and trademarks which combine “vet med” with other terms.
As a result of the weak descriptive or possibly generic nature of the common element of Complainant’s marks and Respondent’s domain name, and the different sound, appearance and meaning of “direct” and “deal”, the Panel finds that the disputed domain name is not identical or confusingly similar to marks in which Complainant has rights.
B. Rights or Legitimate Interests
Complaint asserts, without submitting any evidence, that Respondent does not do business as “VETMEDDEALS.COM” or VetMedDeals but instead the domain and name is used to channel Complaint’s customers to Respondent’s website at “www.24hourpet.com”. This assertion is contradicted by the submitted record and appears to be erroneous. Respondent’s website located at “www.vetmeddeals.com” prominently displays the name VET MED DEALS and does not redirect to the website at “www.24hourpet.com”.
Respondent has submitted evidence showing the term VetMedDeals being used on the website located at <vetmeddeals.com> as early as January 27, 2006. The site appears to operate as an online store for various veterinary medicines. Thus, it appears that Respondent has made bona fide use of the disputed domain name since prior to any objection from Complainant.
Based on the record presented, Complainant therefore has failed to establish that the Respondent does not have legitimate rights and interests in the domain name <vetmeddeals.com>.
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and used the disputed domain name with the sole purpose of diverting business away from Complainant’s sites to Respondent’s own site.
Respondent is using the domain name <vetmeddeals.com> in a manner that is descriptive of his business, that is, a website which offers “deals” on veterinary medicines. When a user visits Respondent’s website the site’s banner reads “Vetmeddeals.com…Always the Lowest Prices on Your Favorite Vet Meds” clearly indicating the purpose of the site.
Complainant also asserts a Simon Elliott, who formerly conducted business with the Complainant, owns or is affiliated with the Respondent but has not offered evidence to prove this assertion.
The Panel concludes that based on the evidence in this case it is more likely than not that Respondent – ostensibly a competitor of Complainant – registered the domain name in good faith to describe the nature of its services and to lead Internet users to its business but did not do so for the deliberate purpose of trading on confusion with Complainant. To the extent that the Complainant and Respondent may be in direct competition, the Panel is not persuaded by the evidence provided that Respondent registered the domain name deliberately to disrupt the business of a competitor. In short, as this Panel noted in a different case, there is nothing on the available record to indicate that the Respondent is a cybersquatter. Network Associates Technology, Inc. v. Lenow International, Inc., WIPO Case No. DBIZ2001-00043.
For all the foregoing reasons, the Complaint is denied.
Mark V.B. Partridge
Dated: September 6, 2007