WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PET360, Inc. v. Private Registrations Aktien Gesellschaft
Case No. D2012-0325
1. The Parties
The Complainant is PET360, Inc. of Plymouth Meeting, Pennsylvania, United States of America, represented by Reger Rizzo & Darnall LLP, United States of America.
The Respondent is Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.
2. The Domain Name and Registrar
The disputed domain name <petfoodsdirect.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2012. On February 16, 2012, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On February 16, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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” 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 the Respondent of the Complaint, and the proceedings commenced on February 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2012.
The Center appointed Andrew F. Christie as the sole panelist in this matter on March 27, 2012. 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 Complainant is in the business of selling pet foods, pet supplies, pet medicines and other pet merchandise through its website at “www.petfooddirect.com”. The Complainant’s business is branded as “America’s Pet Store On The Web”. The Complainant owns the following registered trademarks: PETFOOD DIRECT and PETFOODDIRECT.COM, the applications for which were filed on September 30, 1999, and which were registered on the Supplemental Register on April 17, 2001; and PETFOODDIRECT, the application for which was filed on December 23, 2005, and which was registered on the Principal Register on May 29, 2007. According to the Complainant’s trademark filings, these trademarks were first used in commerce in May 1999.
The disputed domain name was first registered on January 18, 2000. The registration of the disputed domain name was transferred to the current Registrar, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com, on December 6, 2011. The disputed domain name currently resolves to a website containing “click through” links to search portals and other party websites.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is nearly identical and confusingly similar to its trademarks. The Respondent is attempting to use the goodwill generated by the Complainant’s trademarks through the use of a confusingly similar domain name, and by advertising for sale identical products sold by the Complainant. The Respondent’s unauthorized use of the Complainant’s trademarks is causing customer confusion as there is extensive overlap in the areas of commerce targeted by both the Complainant and the Respondent, and such confusion is directly affecting the Complainant’s business.
The Complainant contends the Respondent has no rights or legitimate interests in the disputed domain name because: (i) the Complainant applied for the registration of its trademarks prior to the Respondent registering the disputed domain name; (ii) the Respondent is unknown in the United States of America and abroad and has no reputation with regard to the quality of pet products sold, nor has any registered trademarks or applications with regard to the disputed domain name; (iii) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services but, rather, is using it to attract people interested in the Complainant’s products to divert business to competitors of the Complainant; (iv) there is no evidence the Respondent has been commonly known by the disputed domain name; and (v) instead of actually selling the products, the Respondent acts as a “click through” host to divert business away from the Complainant to other parties affiliated with the Respondent not related to the Complainant.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent has a history of profiting from the use of others’ trademarks by registering and using confusingly similar domain names within the same area of commerce, as evidenced by at least 16 unfavorable UDRP decisions against the Respondent for intentional trademark infringement and likelihood of confusion; (ii) the Respondent has direct knowledge of the Complainant’s products and trademarks and has intentionally registered the disputed domain name to profit from the Complainant’s goodwill and renowned reputation for providing quality pet products and services; and (iii) the Respondent is intentionally diverting customers away from the Complainant for commercial gain by registering and using the disputed domain name, which creates a real likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation and endorsement of the website to which the disputed domain name resolves.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name incorporates the Complainant’s registered trademarks PETFOOD DIRECT, PETFOODDIRECT and PETFOODDIRECT.COM, and adds the letter “s” to the phase “petfood” to change it from the singular to the plural. The addition of this letter does not lessen the inevitable confusion of the disputed domain name with the Complainant’s registered trademarks. Accordingly, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and does not appear to have any association with a legitimate business in connection with the provision of pet food and related goods and services. The website to which the disputed domain name resolves contains what appears to be automatically-generated, paid-per-click links to various businesses, none of which appears to be the business of the Respondent. According to the present record, it appears that the disputed domain name is not being used in connection with a bona fide offering of goods and services. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered after the Complainant’s first use in commerce of its trademarks, and after the Complainant filed for registration of two of its three trademarks. Furthermore, the registration of the disputed domain name was transferred to the current Registrar well after the Complainant obtained registration of its trademarks. The evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of that website. Pursuant to paragraph 4(b)(iv) of the Policy, that is evidence of the registration and use of the disputed domain name in bad faith. Accordingly, this Panel is satisfied that the disputed domain name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <petfoodsdirect.com>, be transferred to the Complainant.
Andrew F. Christie
Dated: April 10, 2012