World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Affinity Petcare S.A. v. Satoshi Shimoshita

Case No. D2012-2053

1. The Parties

The Complainant is Affinity Petcare S.A. of Sant Cugat del Valles, Barcelona, Spain, represented by Sugrañes, S.L., Spain.

The Respondent is Satoshi Shimoshita of Tokyo, Japan.

2. The Domain Name and Registrar

The disputed domain name <brekkies.com> (the “Disputed Domain Name”) is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2012. On October 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 17, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center on October 30, 2012 that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 2, 2012 and on November 14, 2012.

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 the Respondent of the Complaint, and the proceedings commenced on November 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for a Response was December 6, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 7, 2012.

The Center appointed John Swinson as the sole panelist in this matter on December 13, 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 Affinity Petcare S.A., a leading company in dog and cat nutrition in Spain. The Complainant is ranked third in Europe for the provision of dry pet food.

The Complainant owns a number of trade mark registrations in various countries for BREKKIES (together, the “Trade Marks”). The earliest priority date is February 7, 1964 (in Germany and Denmark). The Complainant also owns a number of trade marks which incorporate BREKKIES (eg. BREKKIES EXCEL, BREKKIES CRUNCHY).

The Respondent is Satoshi Shimoshita of Tokyo, Japan. The Respondent did not file a Response, and consequently little information is known about the Respondent.

The Disputed Domain Name was registered on June 25, 1996.

5. Parties’ Contentions

A. Complainant

The Complainant made the following submissions.

Identical or Confusingly Similar

The Disputed Domain Name is verbally, phonetically, visually and conceptually identical to the Complainant’s Trade Marks.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:

- the Respondent is not commonly known by the Disputed Domain Name;

- the is no evidence or legitimate explanation for the Respondent’s use of the Disputed Domain Name (it is not being used to commercialize any product); and

- the Complainant has not licensed or authorized the Respondent to use the Trade Marks.

Registered and Used in Bad Faith

The Respondent has registered the Disputed Domain Name for the purpose of selling, renting or otherwise transferring it to the Complainant (as the owner of the Trade Marks). There is a section on the website at the Dispute Domain Name which states “ask for this domain”, when clicked, a page appears where users can “make an offer”.

The Respondent is using the Disputed Domain Name to disrupt the Complainant’s business. The website at the Disputed Domain Name provides links to the products of the Complainant’s competitors (ie. pet care products).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed 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 Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.

A. Procedural Issues

The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see e.g. Stay In Bed Milk & Bread Pty Ltd and The Uder Company Pty Ltd v. PrivacyProtect.org, WIPO Case No. D2012-0924 and the cases cited therein). However, the Panel may draw appropriate inferences from the Respondent’s default.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Marks.

The Complainant provided comprehensive evidence of its ownership of the Trade Marks. The Panel accepts that the Complainant owns the Trade Marks.

This Panel is satisfied that the Disputed Domain Name is identical to the Trade Marks. The addition of generic top level domains (the “.com” suffix) may be irrelevant in comparing the similarities between a domain name and a trade mark (see e.g. Elizabeth Arden, Inc. v. Fundacion Private Whois, WIPO Case No. D2012-1590).

In this Panel’s opinion, the Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel finds that the following make out a prima facie case:

- there is nothing to suggest that the Respondent is known by the Disputed Domain Name;

- the Complainant has never given the Respondent permission to use the Trade Marks; and

- the website that the Disputed Domain Name resolves to appears to be commercial in nature. It hosts pay-per-click links to Complainant’s competitor’s websites (ie. in relation to pet care products). This is not a fair commercial use of the Trade Marks, nor does it constitute a bona fide offering of goods or services.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and additionally used the Disputed Domain Name in bad faith. Paragraph 4(b) of the Policy provides a number of (non-exhaustive) circumstances that are evidence of registration and use of a domain name in bad faith.

Paragraph 4(b)(iv) is relevant here, it states that: “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 Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.

The evidence submitted by the Complainant shows that the Disputed Domain Name is being used as a pay-per-click landing page, displaying sponsored links for third party websites that offer pet care products which compete with the Complainant’s products. It can be reasonably inferred that the Respondent is profiting from the website through “click-through revenue”. As such, the Panel is of the opinion that the Respondent is using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent had the opportunity to respond to the Complainant’s submissions but failed to do so. The Panel infers from lack of Response that the Respondent could not provide any evidence of good faith use of the Disputed Domain Name (see e.g. Dyson Limited v. Fundacion Private Whois / PPA Media Services, WIPO Case No. D2012-0897 and cases cited therein).

Additionally, the Panel finds that the Respondent’s track record as an unresponsive respondent in previous UDRP cases is further evidence of bad faith (see e.g. Luigi Lavazza S.p.A. v. Satoshi Shimoshita, WIPO Case No. D2011-1299; Fédération Française de Tennis (FFT) v. Satoshi Shimoshita, WIPO Case No. D2011-0813; Jappy GmbH v. Satoshi Shimoshita, WIPO Case No. D2010-1001 and La Quinta Worldwide L.L.C v. Satoshi Shimoshita, WIPO Case No. D2007-1241).

In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <brekkies.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: December 17, 2012

 

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