WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PetMed Express, Inc. v. Private Whois Service c/o 1800petmes.com, Private Whois Service c/o 1800petmds.com, Private Whois Service c/o 1800permeds.com, Private Whois Service c/o 1800oetmeds.com
Case No. D2011-0477
1. The Parties
Complainant is PetMed Express, Inc. of Pompano Beach, Florida, United States of America, represented by Herron Jacobs Ortiz, P.A., United States of America.
Respondent is Private Whois Service c/o 1800petmes.com, Private Whois Service c/o 1800petmds.com, Private Whois Service c/o 1800permeds.com, Private Whois Service c/o 1800oetmeds.com of Nassau, Bahamas.
2. The Domain Names and Registrar
The disputed domain names: <1800oetmeds.com>, <1800permeds.com>, <1800petmds.com>, and <1800petmes.com> (“the Domain Names”) are registered with Internet.bs Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2011. On March 15, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with Domain Names. On March 16, 2011, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to Complainant on March 25, 2011 seeking an amendment of the Complaint. Complainant submitted an amended Complaint on March 30, 2011.
The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 26, 2011.
The Center appointed Clive L. Elliott as the sole panelist in this matter on May 13, 2011. 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
The Domain Names were registered as follows:
<1800petmes.com> and <1800petmds.com> on June 10, 2003; and
<1800permeds.com> and <1800oetmeds.com> on September 23, 2003
5. Parties’ Contentions
Complainant states that it is a leading nationwide pet pharmacy, marketing prescription and non-prescription pet medications and other health products for dogs, cats and horses and is a publicly traded company employing approximately 200 people. Complainant contends that it sold in excess of USD 900 million worth of merchandise in the period 2006 to 2010, and that during the fiscal year to March 31, 2010 it sold in excess of USD 238 million worth of merchandise.
Complainant advises that its current product line contains approximately 750 stock-keeping units (or “SKUs”) including a majority of the well-known brands of medication, such as Frontline Plus®, K9 Advantix® II, Advantage® II, Heatgard Plus®, Sentinel®, Interceptor®, Program®, Revolution®, Deramaxx®, and Rimadyl®. Complainant states that it offers its products through three main sales channels; Internet through its website “www.1800petmeds.com”; by telephone through a toll-free number, 1-800-Pet-Meds; and by direct mail/print through 1-800-PetMeds catalogues, brochures and postcards.
Complainant asserts that it has invested approximately USD 183 million in advertising since 2001 and that its website attracted approximately 17 million visitors during 2010. Complainant further asserts that approximately 2.6 million customers have purchased from it within the last two years and that its website was responsible for USD162.8 million in sales in 2010.
Complainant states that it is the owner of at least six trade mark registrations in the United States of America, one trade mark registration in the European Union and two trade mark registrations in Canada, for marks that consist of or contain the trade mark PETMEDS (“PETMEDS Trade Marks”). The first of these marks was used on September 1, 1996 and Complainant advises that it uses each of the trade marks in connection with various services for ordering pet products and has continuously and extensively used these marks in connection with the advertising and sale of its goods and services.
Complainant contends that each of the Domain Names are confusingly similar to its PETMEDS Trade Marks and that the only difference between them is that the Domain Names misspell Complainant’s trade marks and the Complainant’s domain name <1800petmeds.com> by one letter, making them so similar as to create confusion and constitutes typosquatting.
Complainant asserts that Respondent is exploiting minor misspellings of its mark and domain name by Internet users while attempting to enter Complainant’s Internet address on their web browsers. Complainant further asserts that despite the slight difference between the Domain Names and the PETMEDS Trade Marks the overall impression of each of the Domain Names is one of being connected to the trade mark of Complainant.
Complainant asserts that Respondent is not a licensee of Complainant and has no rights or legitimate interests in the Domain Names. It further asserts that it has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the PETMEDS Trade Marks in any manner.
Complainant contends that upon information and belief Respondent has never used, or made preparations to use, any of the Domain Names or any name corresponding to any of the Domain Names in connection with a bona fide offering of goods or services. Complainants asserts that Respondent is using the Domain Names in connection with websites that provide general links to or information about various third-party services competitive with the services offered by Complainant, including links labeled “Pet Meds – Save up to 50%”, “Pet medicine For Less”, “Pet Meds Blowout”, “Pet Products & Supplies” and “Pet Meds at Drugstore.com”.
Complainant submits that Respondent is making an illegitimate, commercial, unfair use of the Domain Names with the intention of making commercial gain by misleadingly diverting consumers to third parties’ websites by using pay per click as a means of generating revenue and tarnishing the PETMEDS Trade Marks by disrupting Complainant’s relationship with its customers or potential customers.
Complainant contends that Respondent has registered the Domain Names in bad faith as all four Domain Names are likely to cause confusion by diverting Internet traffic if they misspell Complainant’s mark and domain name when attempting to access Complainant’s website. Complainant suggests that Respondent’s choice of the slightly misspelled versions of Complainant’s marks and domain name is deliberate.
Complainant asserts that its rights in the PETMEDS Trade Marks are well established and given that the Domain Names are so obviously connected with Complainant due to its use of the PETMEDS Trade Marks for more than 14 years, Respondent’s actions suggest opportunistic bad faith in violation of the Policy. Complainant also submits that bad faith exists because Respondent registered the Domain Names approximately six years after Complainant began using its first PETMEDS Trade Marks, and by choosing to deliberately misspell Complainant’s mark and domain name suggests that Respondent knew of the existence of Complainant’s rights.
The Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant is the owner of trade mark registrations in the United States of America, in the European Union and in Canada. These trade marks comprise or contain the trade mark PETMEDS (“PETMEDS Trade Marks”). The first of these marks was used on September 1, 1996 in connection with various services for ordering pet products.
The Domain Names are not identical to the PETMEDS Trade Marks. Each does however contain a relatively insignificant typographical difference and each is thus confusingly similar to the PETMEDS Trade Marks. The Domain Names each contain “petmeds” or a variation thereof and suggest a connection or association with Complainant, but contrary to the fact. By adopting Domain Names that incorporate the PETMEDS Trade Marks and convey the same overall impression as Complainant’s PETMEDS Trade Marks Respondent has used terminology confusingly similar to Complainant's trade marks.
Accordingly, this element is made out by Complainant.
B. Rights or Legitimate Interests
Respondent is clearly using the Domain Names for overt commercial purposes. Complainant contends, without dispute, that Respondent is using the Domain Names in relation to pay-per-click advertisements. In particular, it is alleged that Respondent is using the Domain Names in connection with websites that provide links to or information about various third-party services competitive with the services offered by Complainant. Examples are provided and include links identified as “Pet Meds – Save up to 50%”, “Pet medicine For Less”, “Pet Meds Blowout”, “Pet Products & Supplies” and “Pet Meds at Drugstore.com”.
It is well established that rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name, unless it was seeking to create a mistaken impression of identification or association with the particular complainant. The Panel is of the clear view that such a mistaken impression or identification with Complainant is likely to arise in this present case and for commercial reasons which are not at all difficult to identify.
For these reasons Complainant again makes out this element.
C. Registered and Used in Bad Faith
Given the nature and extent of Complainant's prior use and registration of the PETMEDS Trade Marks, it is reasonable to infer that Respondent registered the Domain Names in bad faith, with knowledge (actual or imputed) that by using the different variations of Complainant’s trade marks as part of the Domain Names would likely cause an Internet user visiting Respondent’s web site, or one of its alleged click-through affiliates, to assume, contrary to the fact, that the Domain Names are somehow sponsored by or affiliated with Complainant.
Respondent’s rather transparent failure to answer any of these allegations or provide any form of explanation supports the conclusion that the Domain Names were registered and used in bad faith and that Complainant is therefore entitled to relief pursuant to the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, namely <1800oetmeds.com>, <1800permeds.com>, <1800petmds.com>, and <1800petmes.com> be transferred to the Complainant.
Clive L. Elliott
Dated: June 2, 2011